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United Kingdom House of Lords Decisions
You are here: BAILII >> Databases >> United Kingdom House of Lords Decisions >> Designer Guild Limited v. Russell Williams (Textiles) Limited (Trading As Washington Dc)  UKHL 58;  1 All ER 700;  1 WLR 2416 (23rd November, 2000)
Cite as:  1 WLR 2416,  ECDR 10,  FSR 113,  WLR 2416,  UKHL 58,  FSR 11,  1 All ER 700
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Lord Bingham of Cornhill Lord Hoffmann Lord Hope of Craighead Lord Millett Lord Scott of Foscote
DESIGNER GUILD LIMITED
RUSSELL WILLIAMS (TEXTILES) LIMITED (TRADING AS WASHINGTON DC)
ON 23 NOVEMBER 2000
LORD BINGHAM OF CORNHILL
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.
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.
It is not now disputed that DGL's Ixia design was an original product of DGL's skill and labour [see Images]. 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.
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.
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.
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.
There was, I conclude, no ground for interfering with the judge's conclusion.
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.
1. The Issues
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?
2. The findings of the judge  FSR 803.
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:
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.
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:
3. The Court of Appeal
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:
(a) Visual comparison
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.
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.
(c) Ideas rather than expression.
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.
My Lords, I must examine each of these three reasons.
4. Visual comparison
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 importance and deciding whether they are sufficient to bring the whole within some legal description. It is often difficult to give precise reasons for arriving at a conclusion one way or the other (apart from an enumeration of the relevant factors) and there are borderline cases over which reasonable minds may differ. But the first step in trying to answer any question (whether of impression or otherwise) is to be clear about what the question is. In the present case, it is whether the features which the judge found to have been copied from Ixia formed a substantial part of Ixia as an artistic work. That is certainly a question of judgment or impression. But why, in answering that question, should it be relevant to consider whether Ixia did or did not look like Marguerite?
The similarities between Ixia and Marguerite were of course highly relevant to the question of whether there had been copying and, if so, what features had been copied. They were the foundation upon which the judge constructed his conclusion that the features I have enumerated had been copied. But once those features have been identified, the question of whether they formed a substantial part of the plaintiff's design cannot be decided by revisiting the question of whether it looks like the defendant's. The more I listened to Mr. Fysh's submissions as to why it was relevant to compare Ixia with Marguerite, the more it seemed to me that he was skilfully trying to undermine his concession that he could not challenge the judge's finding that certain features of the design had been copied. Mr. Alastair Wilson Q.C. met this submission on its own ground by producing two artistically draped samples of the two designs in similar colourways. I am bound to say that, at some distance, they looked remarkably similar to me. But, in a case in which there is no longer an issue over what has been copied, I do not regard this as a relevant exercise. In my respectful opinion the Court of Appeal erred in principle by allowing itself to be distracted from the statutory question, which was whether the elements found as a fact to have been copied formed a substantial part of Ixia.
The exercise in dissection also, as it seems to me, involved two errors. First, it ignored substantial parts of the judge's findings on what had been copied and, secondly, it dealt with the copied features piece-meal instead of considering, as the judge had done, their cumulative effect. Thus the judge's findings on copying were by no means confined to the notion of stripes and flowers. There are many ways of depicting both stripes and flowers and the judge was obviously impressed by the fact that the defendant had been unable to find any other stripe and flower pattern which resembled Ixia or Marguerite in anything like the degree to which they resembled each other. With the assistance of the expert evidence of Mr. Victor Herbert, a design consultant, the judge identified the additional visual similarities as arising from such matters as the brush-work, the resist effect and the loose arrangement of freely drawn leaves and flowers. These features, he found, had been copied and cumulatively constituted a substantial part of the work.
My Lords, here again it seems to me that Mr. Fysh's invitation to the Court of Appeal to reduce the copied elements to the mere notion of stripes and flowers amounted to an attempt to withdraw his concession that he could not challenge the judge's findings on copying. The Court of Appeal dismissed some of the elements which the judge found to have been copied as "technique." That is true. The creation of artistic work involves having ideas and using technique to express them. But that cannot detract from the fact that the results of the use of the techniques were visual effects forming part of the artistic work. They were what produced the distinctive impression of looseness and boldness combined with lightness and fragility which the designer wished to achieve.
The Court of Appeal also dismissed the significance of these copied elements on the ground that the visual effects they produced as applied to the two designs were in certain respects different. For example, the underlying stripe colour showing through the petals in Ixia made them look translucent whereas in Marguerite they looked perforated. But this seems to me the same fallacy as that involved in visual comparison. When one is considering the question of substantiality, it is no longer relevant to examine in what respects the two designs are different. The difference between translucency and perforation may have led to the conclusion that the defendant did not copy its resist effect from the plaintiff. But once it is concluded that it did, the only question is whether the resist effect as such, together with all the other copied elements, added up to a substantial part of the plaintiff's work.
If there had been no finding that anything had been copied except the notion of flowers and stripes, the conclusion of the Court of Appeal would have been unexceptionable. But this involved ignoring the findings of fact, both in their detail and their cumulative effect.
6. Ideas and expression
It is often said, as Morritt L.J. said in this case, that copyright subsists not in ideas but in the form in which the ideas are expressed. The distinction between expression and ideas finds a place in the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) (O.J. 1994 L. 336 p. 213), to which the United Kingdom is a party (see article 9.2: "Copyright protection shall extend to expressions and not to ideas "). Nevertheless, it needs to be handled with care. What does it mean? As Lord Hailsham of St. Marylebone said in L.B. (Plastics) Ltd v. Swish Products Ltd.  R.P.C. 551, 629, "it all depends on what you mean by 'ideas'."
Plainly there can be no copyright in an idea which is merely in the head, which has not been expressed in copyrightable form, as a literary, dramatic, musical or artistic work. But the distinction between ideas and expression cannot mean anything so trivial as that. On the other hand, every element in the expression of an artistic work (unless it got there by accident or compulsion) is the expression of an idea on the part of the author. It represents her choice to paint stripes rather than polka dots, flowers rather than tadpoles, use one colour and brush technique rather than another, and so on. The expression of these ideas is protected, both as a cumulative whole and also to the extent to which they form a "substantial part" of the work. Although the term "substantial part" might suggest a quantitative test, or at least the ability to identify some discrete part which, on quantitative or qualitative grounds, can be regarded as substantial, it is clear upon the authorities that neither is the correct test. Ladbroke (Football) Ltd. v. William Hill (Football) Ltd.  1 W.L.R. 273 establishes that substantiality depends upon quality rather than quantity (Lord Reid at p. 276, Lord Evershed at p. 283, Lord Hodson at p. 288, Lord Pearce at p. 293). And there are numerous authorities which show that the "part" which is regarded as substantial can be a feature or combination of features of the work, abstracted from it rather than forming a discrete part. That is what the judge found to have been copied in this case. Or to take another example, the original elements in the plot of a play or novel may be a substantial part, so that copyright may be infringed by a work which does not reproduce a single sentence of the original. If one asks what is being protected in such a case, it is difficult to give any answer except that it is an idea expressed in the copyright work.
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 QBD 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.
7. The appellate function
The question of substantiality is one of mixed law and fact in the sense that it requires the judge to apply a legal standard to the facts as found. It is, as I said, one of impression in that it requires the overall evaluation of the significance of what may be a number of copied features in the plaintiff's design. I think, with respect, that the Court of Appeal oversimplified the matter when they said that they were in as good a position to decide the question as the judge. I say this for two reasons.
First, although the question did not depend upon an assessment of the credibility of witnesses, there seems to me no doubt that a judge may obtain assistance from expert evidence in identifying those features of an artistic work which enable it to produce a particular visual effect. The plaintiff's expert Mr. Herbert described his expertise as "the art of visual literacy." This seems to me to be right. So I think that the judge, having heard Mr. Herbert, was well placed to assess the importance of the plaintiff's designer's brush strokes, resist effect and so forth in the overall artistic work. The Court of Appeal, on the other hand, adopted a reductionist approach which ignored these elements.
Secondly, because the decision involves the application of a not altogether precise legal standard to a combination of features of varying importance, I think that this falls within the class of case in which an appellate court should not reverse a judge's decision unless he has erred in principle: see Pro Sieben Media A.G. v. Carlton U.K. Television Ltd.  1 WLR 605, 612-3. I agree with Buxton L.J. in Norowzian v. Arks Ltd. (No. 2)  FSR 363, 370 when he said:
In my opinion the judge made no error of principle. His decision that the copied features formed a substantial part of the work should therefore not have been reversed. I would allow the appeal.
LORD HOPE OF CRAIGHEAD
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, and for the reasons which he has given I too would allow the appeal.
Both parties design and sell fabrics and wallpapers. The plaintiffs brought proceedings against the defendants for infringement of the copyright in one of their designs. The trial judge (Mr. Lawrence Collins Q.C.) found that the defendants had prior access to the copyright work and that their design reproduced many of its features. He rejected the defendants' evidence of independent origin, and found that their design was copied from and reproduced a substantial part of the copyright work. He accordingly gave judgment for the plaintiffs.
The defendants appealed to the Court of Appeal, but they did so on a very narrow ground. They abandoned most of the grounds in their notice of appeal, and did not challenge the Judge's findings of fact, in particular that the defendants' design was copied from and reproduced features of the copyright work. They contented themselves with challenging his conclusion that what they had taken was a substantial part of the copyright work.
The Court of Appeal began by making a visual comparison of the two designs. Their initial reaction was that it did not look as if the defendants' design involved the copying of a substantial part of the copyright work. As Morritt LJ put it at para. 30:
Recognising that it would not be right to reach a concluded view "on so subjective and unanalytical approach alone", they proceeded to conduct a detailed analysis of the judge's findings of fact and recorded the many differences of detail in those features of the defendants' design which the judge had found to have been copied from the copyright work. This only served to confirm their initial impression. They concluded that, while the defendants had copied the idea of the copyright work and adopted the same techniques, they had not copied a substantial part of the expression of the idea. They accordingly allowed the defendants' appeal.
It is difficult to avoid the impression that the Court of Appeal were not persuaded that the defendants had copied the copyright work at all. Unable to reverse the judge's unchallenged findings that they had, they thought that if the defendants had copied any features of the copyright work they could not have copied very much. By adopting this approach they not only went behind the judge's unchallenged findings of fact, which they were not entitled to do, but rejected his finding of substantiality which, being essentially a matter of impression, an appellate court should always be very slow to do.
If this were all, I doubt that I would have wished to add anything to what my noble and learned friends have said. But I think that the Court of Appeal erred in principle in the approach which they adopted. In particular, I think that they misunderstood the function of a visual comparison of the two works in a case concerned with artistic copyright and the stage at which such a comparison should be undertaken.
It must be borne in mind that this is an action for infringement of copyright. It is not an action for passing-off. The gist of an action for passing off is deceptive resemblance. The defendant is charged with deceiving the public into taking his goods as and for the goods of the plaintiff. A visual comparison of the competing articles is often all that is required. If the overall impression is that "they just do not look sufficiently similar" then the action will fail.
An action for infringement of artistic copyright, however, is very different. It is not concerned with the appearance of the defendant's work but with its derivation. The copyright owner does not complain that the defendant's work resembles his. His complaint is that the defendant has copied all or a substantial part of the copyright work. The reproduction may be exact or it may introduce deliberate variations - involving altered copying or colourable imitation as it is sometimes called. Even where the copying is exact the defendant may incorporate the copied features into a larger work much and perhaps most of which is original or derived from other sources. But while the copied features must be a substantial part of the copyright work, they need not form a substantial part of the defendant's work: see Warwick Film Producers Ltd. v. Eisinger  Ch. 509. Thus the overall appearance of the defendant's work may be very different from the copyright work. But it does not follow that the defendant's work does not infringe the plaintiff's copyright.
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. In the present case the disposition of the flowers and (except in one instance) the colourways of the defendants' design are very different from those of the plaintiffs' design. They were not taken from the copyright work, and the plaintiffs make no complaint in respect of them. They make a significant difference to the overall appearance of the design. But this is not material where the complaint is of infringement of copyright and not passing off.
Once the judge has found that the defendants' design incorporates features taken from the copyright work, the question is whether what has been taken constitutes all or a substantial part of the copyright work. This is a matter of impression, for whether the part taken is substantial must be determined by its quality rather than its quantity. It depends upon its importance to the copyright work. It does not depend upon its importance to the defendants' work, as I have already pointed out. The pirated part is considered on its own (see Ladbroke (Football) Ltd. v. William Hill (Football) Ltd.  1 W.L.R. 273, 293 per Lord Pearce) and its importance to the copyright work assessed. There is no need to look at the infringing work for this purpose.
The Court of Appeal were concerned only with this second stage. They were not entitled to reverse the judge's finding that the defendants' design reproduced features of the copyright work, nor his identification of the features in question. The only issue was whether those features represented a substantial part of the copyright work. A visual comparison of the two designs was not only unnecessary but likely to mislead.
My noble and learned friend Lord Scott of Foscote has drawn attention to the differences between the copying of a discrete part of the copyright work and the altered copying of the whole, or the copying with or without modifications of some but not all the features of the copyright work. The distinction is not material in the present case. Whether or not it is alleged that a discrete part of the copyright work has been taken, the issues of copying and substantiality are treated as separate questions. Where, however, it is alleged that some but not all the features of the copyright work have been taken, the answer to the first question will almost inevitably answer both, for if the similarities are sufficiently numerous or extensive to justify an inference of copying they are likely to be sufficiently substantial to satisfy this requirement also.
For these reasons, as well as those given by my noble and learned friends Lord Hoffmann and Lord Bingham of Cornhill, I would allow the appeal.
LORD SCOTT OF FOSCOTE
Both the appellant, Designer Guild Ltd. ("DGL") and the respondent, Russell Williams (Textiles) Ltd. ("RWT"), design and sell fabrics. The issue in this litigation is whether RWT's Marguerite design is an infringing copy of DGL's Ixia design. The trial judge, Mr. Lawrence Collins Q.C., sitting as a deputy judge of the Chancery Division, held that it was. The Court of Appeal held that it was not.
The Ixia design
Of the two designs Ixia came first. It was produced in 1994, in art form, by Helen Burke, a designer employed by DGL. From Helen Burke's design the Ixia fabric was produced. The design, in its artwork form, consisted of vertical stripes of alternating pink and pale yellow and with flowers scattered haphazardly across the stripes. The flowers consisted of four, and sometimes three, white petals with a centre stamen in a bold deep red and with green leaves in the vicinity of, but not actually connected to, each set of white petals. The stripes were painted with rough edges and rough brushwork. The flower petals and the leaves were painted in an impressionistic style with the colour of the stripes showing through the petals. Indeed the design as a whole was impressionistic in character. When the artwork design was transposed on to fabric there were some differences. Three distinct versions of stripes were produced. One version alternated pink with pale yellow as the artwork had done. The other two alternated deep blue stripes with very pale blue stripes and turquoise stripes with very pale blue stripes. The pale yellow and the pale blue stripes on the fabric do not, unlike the artwork pale yellow stripes, show the brushwork. But there were no other significant differences between the stripes on the fabric and the stripes on the artwork. The fabric stripes, whichever of the three colourways, pink, blue or turquoise, one looks at, give the impression as do the artwork stripes of rough, impressionistic brushwork, with the underlying colour of the fabric showing through and with rough edges to the stripes. The flower petals, the stamen and the leaves on the fabric have no significant differences from their artwork counterparts, save that on the blue colourway design the stamen are turquoise instead of red. It is accepted, that the Ixia design is, for copyright purposes, an original artistic work and that the copyright is owned by DGL.
Fabric with the Ixia designs was included by DGL in its 1995 Orientalis collection. DGL distributed pattern books of its collection, some 1500 or thereabouts, to its wholesale and retail customers and the Ixia fabrics went on sale at DGL's shop in the King's Road, London, on 1 September 1995. The fabrics were shown at a trade fair in London on 1 October 1995. The trade fair was attended by Mrs. Williams, a director of RWT. Mrs. Williams works with RWT's designers on the design of their textile patterns. The evidence of the marketing of the Ixia fabrics led the judge to conclude that, by October or November 1995 when RWT's Marguerite design was created, RWT had had the opportunity to copy.
In September 1996 DGL was alerted to the presence at a trade fair in Utrecht of fabrics with the Marguerite design. An examination of these fabrics led DGL to believe that the Marguerite design was a copy of the Ixia design. Letters passed between the parties' respective solicitors and litigation then followed.
The deputy judge, in a conspicuously careful judgment  FSR 803, came to the conclusion that the Marguerite design had been copied from the Ixia design. His conclusion of copying was not challenged in the Court of Appeal and is not challenged before your Lordships. The point taken in the Court of Appeal, successfully as it turned out, was a substantiality point. Section 16(3) of the Copyright Act 1988 provides that:
The Court of Appeal was persuaded that although there had been copying - as I have said, the deputy judge's finding of fact to that effect was not challenged - the copying did not extend to the copying of a substantial part of Ixia. Morritt L.J., who gave the leading judgment in the Court of Appeal, succinctly stated RWT's case thus:
In assessing the manner in which this issue of substantiality should be approached and whether the Court of Appeal's answer on the issue was right, it is necessary, in my opinion, to start with the judge's finding that copying was established. What was it that he found to have been copied? Clarity as to the answer to that question must precede the question as to whether what was copied was the whole or a substantial part of the copyright work.
The finding of copying
The judge came to the conclusion of copying via a consideration of the similarities between the two designs, a recognition of the opportunity to copy that RWT had had, and a consideration of RWT's evidence as to the independent provenance of the Marguerite design.
The Marguerite design, like the Ixia design, is based on vertical stripes in alternating colours and with flowers and associated stalks and leaves scattered across the stripes. The flower petals, like those on the Ixia design, are white. The stalks and leaves are two-tone green. As with the Ixia design, the Marguerite design was reproduced on fabric in different versions with different colourways. Each version has pale yellow stripes. The stripes that alternate with the pale yellow stripes are either pink, blue, green or orange. A difference between the Ixia fabric and the Marguerite fabric is that on Marguerite the pale yellow stripes, as well as the alternate stripes, show brushwork lines. On the Ixia fabric it is only the alternate colour stripes that show the brushwork lines. The Marguerite flower petals and stalks and leaves show, when compared with those on Ixia, both similarities and differences.
On Marguerite the white petals are painted more boldly, or less delicately, than those on Ixia but, still, like those on Ixia, the underlying stripe colour shows through the petals. The Marguerite stamen on the pink colourway design are of a somewhat deeper shade of red than those on the Ixia pink colourway design. On the Ixia fabric with a blue colourway the stamen are turquoise; on the fabric with a turquoise colourway, the stamen are the same shade of red as on the pink colourway fabric. On each of the Marguerite fabrics, other than that with a pink colourway, the stamen are biscuit coloured. The leaves on the Ixia fabric are two-tone green. The stalks and leaves on the Marguerite fabric, too, are two-tone green of much the same shades. But the latter are more firmly and less impressionistically drawn than the former.
The judge came to the following conclusion on similarity, at p. 815:
He identified seven similarities which led him to that conclusion. He described them as follows, at p. 813:
He referred also to the differences between the two designs:
Having expressed his conclusion on the rival fabrics' similarities and having found that RWT personnel had had an opportunity to copy Ixia, the judge turned his attention to RWT's evidence as to the independent provenance of their Marguerite design. This evidence was given by Miss Ibbotson, the designer of the Marguerite design, and Mrs. Williams, a director of RWT who had worked with Miss Ibbotson in producing the Marguerite design. Their evidence was that the Marguerite flowers had been derived from an artwork design, referred to as "Open Cherry Blossom", created by Miss Ibbotson in October 1995. Variations had been incorporated into the Open Cherry Blossom flower design which had led to the Marguerite flower design. This flower design had then been added to a number of colourways of which Mrs. Williams had chosen the four to which I have already referred. Both Miss Ibbotson and Mrs. Williams said that at the time the Marguerite design was being developed they were not aware of the Ixia design. The judge summed-up the position as follows, at p. 818:
But the judge rejected the evidence of Miss Ibbotson and Mrs. Williams. He described Miss Ibbotson, at p. 819, as "a very unsatisfactory witness" and said that:
They had given evidence that the origin of Marguerite was an acetate floral design that, in October 1995, had been copied from Open Cherry Blossom in order to enable the floral motif on Open Cherry Blossom to be used for printing white flowers on to muslin.
The judge had been troubled about this evidence, both because of differences between the flowers on the acetate design and the Open Cherry Blossom flowers and also because the flowers on the acetate had certain characteristics which appeared on the Ixia flowers but not on the Open Cherry Blossom flowers. He expressed the conclusion, at p. 820, that:
The judge rejected, therefore, the evidence that Miss Ibbotson and Mrs. Williams had given of the provenance of the Marguerite design. He rejected also Mrs. Williams' evidence that she had been unaware of the Ixia design. He said:
The judge's finding of copying, accepted before the Court of Appeal and before your Lordships, and the manner in which that finding was arrived at, are, in my opinion, of fundamental importance in reviewing the reversal by the Court of Appeal of his decision. The finding of copying cannot be accurately described as a finding of the copying of a part of Ixia. In the passage cited above the judge said that DGL had proved that RWT "copied Ixia". He did not find that the Ixia stripes had been copied, or that the Ixia flowers or leaves had been copied or that the colours of the ingredients of the design had been copied, or that any specific feature of Ixia had been copied. He simply found that the Ixia design had been copied. The Ixia design had incorporated features that, by themselves, were not original. There was nothing original about vertical stripes. Helen Burke had based her vertical stripes on fabrics appearing in various pictures painted by Matisse. But she had brought flowers, leaves and vertical stripes together in a design that was accepted to be an original artistic work. The judge, rejecting the evidence of Miss Ibbotson and Mrs. Williams, found that the acetate, with the flowers, stalks and leaves, and the vertical stripe work of the Marguerite design had been created together for the purpose of producing the Marguerite design as a copy of the Ixia design. So, in a case of this sort what part does the concept of substantiality have to play?
Section 16(3) of the 1988 Act says that copying a copyright work is a copyright infringement if the copying is of "the work as a whole or any substantial part of it". Section 16(3) may come into play in two quite different types of case. One type of case is, obviously, where an identifiable part of the whole, but not the whole, has been copied. For example, only a section of a picture may have been copied, or only a sentence or two, or even only a phrase, from a poem or a book, or only a bar or two of a piece of music, may have been copied (see the examples given at pp. 88/89, para. 2-102 of Laddie, Prescott & Vitoria, The Modern Law of Copyright and Designs, 2nd ed. (1995) (which, for convenience, I will refer to as 'Laddie'). In cases of that sort, the question whether the copying of the part constitutes an infringement depends on the qualitative importance of the part that has been copied, assessed in relation to the copyright work as a whole. In Ladbroke (Football) Ltd. v. William Hill (Football) Ltd.  1 W.L.R. 273 Lord Reid said at p. 276, that:
The present case is not a case of that type. The judge did not identify any particular part of Ixia and hold that that part had been copied. His finding of copying related to Ixia as a whole.
The other type of case in which a question of substantiality may become relevant is where the copying has not been an exact copying of the copyright work but a copying with modifications. This type of copying is referred to in Laddie as "altered copying". A paradigm of this type of case would be a translation of a literary work into some other language, or the dramatisation of a novel. The translation, or the play or film, might not have a single word in common with the original. But, assuming copyright existed in the original, the "copy" might well, and in the case of a word-by-word translation certainly would, constitute an infringement of copyright.
The present case is an "altered copying" case. Helen Burke put together a number of artistic ideas derived from various sources in order to produce her Ixia design, an original artistic design as it is accepted to be. Miss Ibbotson and Mrs. Williams, as the judge found, copied the Ixia design in order to produce their Marguerite design. But they did so with modifications. The Marguerite design is not an exact copy of Ixia. Nor is any specific part of the Marguerite design an exact copy of any corresponding part of the Ixia design. It is an altered copy.
The question, then, where an altered copy has been produced, is what the test should be in order to determine whether the production constitutes a copyright infringement. If the alterations are sufficiently extensive it may be that the copying does not constitute an infringement at all. The test proposed in Laddie (pp. 92/93, para. 2-108) to determine whether an altered copy constitutes an infringement is:
My Lords, I think this is a useful test, based as it is on an underlying principle of copyright law, namely, that a copier is not at liberty to appropriate the benefit of another's skill and labour.
My noble and learned friend Lord Millett has made the point that once copying has been established, the question of substantiality depends on the relationship between what has been copied on the one hand and the original work on the other, similarity no longer being relevant. My Lords, I respectfully agree that that would be so in the first type of case. But in an altered copying case, particularly where the finding of copying is dependant, in the absence of direct evidence, upon the inferences to be drawn from the extent and nature of the similarities between the two works, the similarities will usually be determinative not only of the issue of copying but also of the issue of substantiality. And even where there is direct evidence of copying, as, for example, where it is admitted that the copier has produced his 'copy' with the original at his elbow, the differences between the original and the 'copy' may be so extensive as to bar a finding of infringement. It is not a breach of copyright to borrow an idea, whether of an artistic, literary or musical nature, and to translate that idea into a new work. In 'altered copying' cases, the difficulty is the drawing of the line between what is a permissible borrowing of an idea and what is an impermissible piracy of the artistic, literary or musical creation of another. In drawing this line, the extent and nature of the similarities between the altered copy and the original work must, it seems to me, play a critical and often determinative role. In particular, this must be so where there is no direct evidence of copying and the finding of copying is dependant on the inferences to be drawn from the similarities. In the Little Spanish Town case, Francis Day and Hunter Ltd. v. Bron  Ch. 587, Wilmer L.J. said:
and Diplock L.J. said:
In the present case, the similarities between Ixia and Marguerite, as found by the judge, play, in my judgment a determinative role. If the similarities between Ixia and Marguerite were so extensive and of such a nature as to justify a finding that, in the absence of acceptable evidence of an independent provenance for Marguerite, Marguerite was copied from Ixia, it must, in my opinion, follow that the Marguerite design incorporated a substantial part of the Ixia design. It must follow also that, in designing the Marguerite design, the designers incorporated a substantial part of the skill and labour of Helen Burke. The judge's finding of copying made it, in my opinion, unnecessary for him to go on to ask whether the copying was of a substantial part. But both the judge and the Court of Appeal engaged in that enquiry.
The judge did so in order to deal with arguments that had been addressed to him by Mr. Geoffrey Hobbs Q.C., counsel for RWT at the trial. Mr. Hobbs, as I read the judge's description of his argument, was arguing that the Marguerite white flowers had not been copied from Ixia but had been derived, via the acetate, from the Open Cherry Blossom design, and that, accordingly, the white flowers should be set to one side when considering whether the Marguerite design had copied a substantial part of the Ixia design. Counsel pointed out, correctly, that the Ixia vertical stripes were not original but had been derived from Matisse and that the Marguerite vertical stripes differed geometrically and in colour from the Ixia stripes. It followed, counsel submitted, that the copying of whatever was original in the Ixia design could not be said to be a substantial part of that design.
The judge, in rejecting that argument, said, at p. 828: "In my judgment there has been copying of a substantial part." He went on to emphasise that it was "the whole work" that had to be looked at "to determine whether the alleged infringing material [had] adopted the essential features and substance of the original". He said:
In my opinion, the judge's approach in comparing Ixia ("the whole work") with Marguerite ("the end result") was correct. And having made the comparison he expressed his conclusion that: "It is the design which was copied and has been reproduced" (emphasis added). So, what had been copied was the design, and the design was a substantial part. In dealing in this way with the "substantial part" argument that had been addressed to him by counsel, the judge was re-affirming his conclusion that the Ixia design had been copied.
The Court of Appeal's approach to the 'substantial part' issue
In paragraph 12 of his judgment, Morritt L.J. recorded that counsel for RWT had accepted that he could not challenge the judge's findings on copying and that the similarities between the two fabrics described by the judge did exist. He recorded counsel's argument that "notwithstanding such copying and notwithstanding such similarities" DGL's claim should fail "because there was no copying of the whole of the painting of Ixia and such copying as there was of part of the painting of Ixia did not extend to a substantial part". This submission was not, in my view, consistent with the judge's findings of copying. Moreover, I think, with respect to counsel, that it introduced a confusion. Counsel was arguing the case as if it were one in which only a part of Ixia had been copied. But that was not what the judge had held.
This approach led the court into attempting a dissection of the rival designs in an attempt to identify the part or parts of Ixia that had been copied. It led Morritt L.J., at paragraph 25, to formulate as the question of fact to be determined: "Did the production of Marguerite involve the indirect copying of a substantial part of the painting of Ixia?"
At paragraph 29 of his judgment Morritt L.J. referred to " . those features of the painting of Ixia which the judge considered to have been copied into Marguerite". He summarised them as:
This was a fair and accurate summary of the respects in which the judge had found there to be similarities between the two designs. They were the similarities that, with other indicia, had led him to the conclusion that the designers of Marguerite had copied the Ixia design. But the judge had not expressed his finding of copying as being limited to those features. Morritt L.J. then went on to consider in turn each of the features and to ask himself whether a copying of that feature constituted an infringement. He concluded in each case that it did not. As to the combination of the flowers and stripes, he regarded that as the copying of an idea, rather than the copying of the expression of an idea. As to the relationship between the flowers and the stripes, he said that counsel for DGL had accepted that the layout or disposition of the flowers in Marguerite was not an infringement of copyright in that it had been derived from an independent source. He said, also, that the flowers in Marguerite were not copies of those in Ixia. As to the concession, I think there may have been some misunderstanding. Certainly before your Lordships no such concession has been made. Moreover the judge had rejected RWT's evidence as to the provenance of the Marguerite flowers and had made a finding of copying that extended to the design as a whole. As to the way in which the flowers and stripes were painted, i.e. the brushwork, Morritt L.J. agreed that comparable painting techniques had been used, but said, at paragraph 33, that "the visual result is not the same." And as to the "resist" effect i.e. the technique by which an impression is given that an undercolour is showing through, here again, the Lord Justice discerned visual differences between the rival designs. He expressed his conclusion in paragraph 35:
and, in paragraph 37:
Auld L.J. and Clarke L.J. agreed, and, consequently, the appeal was allowed.
In my opinion, there are two respects in which the Court of Appeal's approach went wrong. First, the conclusions seem to me to contradict the judge's finding of copying. More important, however, the approach whereby the constituent features of the rival designs were isolated from the whole and compared with one another was, in my judgment, in a case where copying had been found established and the finding was not under challenge, wrong in principle. The Marguerite design was an altered copy. The question whether the copying constituted an infringement did raise a question of substantiality, but a question that had to be determined by comparing Marguerite as a whole with Ixia as a whole. Did Marguerite, incorporate a substantial part of the skill and labour expended by the designer of Ixia in producing Ixia?
The judge had found that it did. He could not otherwise have made his finding of copying. There had been no direct evidence of copying and the judge's finding had been based on the extensive similarities between Ixia and Marguerite. These similarities, coupled with the opportunity to copy and in the absence of any acceptable evidence from RWT as to an independent provenance for Marguerite, had led the judge to conclude, on a balance of probabilities, that Marguerite had been copied from Ixia. If the similarities between the two works were sufficient to justify the inference that one had been copied from the other, there was, in my judgment, no further part for the concept of substantiality to play. The thrust of Morritt L.J.'s judgment in the present case suggests that he disagreed with the basis on which the judge had arrived at his finding of copying. If the judge's finding of copying had been challenged in the Court of Appeal on the ground that the similarities between Ixia and Marguerite were not sufficiently substantial to justify the inference that Marguerite had been copied from Ixia, the challenge would, I think, have been sympathetically received. And if asked whether the similarities on which the judge had based his finding of copying showed that Marguerite had incorporated a substantial part of Helen Burke's skill and labour in designing Ixia, I think that the Court of Appeal, in disagreement with the judge, would have said that it did not.
But the finding of copying was not challenged, and, in any event, findings on such matters are particularly the province of the trial judge. In Biogen Inc. v. Medeva Plc.  RPC 1 my noble and learned friend, Lord Hoffmann, commented that:
The same caution should, in my view, be employed in relation to evaluations about similarities and substantiality. (see also the remarks of Buxton L.J. in Norowzian v. Arks Ltd. (No. 2)  FSR 363, 370).
For these reasons, and those given by my noble and learned friend, Lord Bingham of Cornhill, whose speech I have the advantage of reading in draft, I would allow the appeal.