s

10

15

INo.25] Z7th December 1979

IN THE HOUSE OF LoRDS

Before: LoRD WILBERFORCE

551

[1979] R.P.C.

LoRD HAILSHAM OF ST. MARYLEBONE LoRD SALMON LoRD FRASER OF TuLLYBELTON LoRD KEITH OF KlNKEL

20th-23rd, 27th-30th November, 1978 and 2nd February, 1979

IN THE SUPREME CoURT OF JUDICATURE-COURT OF ApPEAL

Before: LoRD JUSTICE BUCKLEY LoRD JUSTICE GoFF LORD JUSTICE WALLER

25th-27th, 30th and 31st May, Ist-3rd, 14th-17th June and 26th October, 1977

IN mE HIGH COURT OF JUSTICE-CHANCERY DIVISION

Before: MR. JUSTICE WHITFORD

15th· 19th, 22nd-26th and 29th November, 1976

L. B. (PLASTICS) LIMITED V. SWISH PRODuers LIMITED

Copyright - Infringement - Artistic copyright in production drawings - Repro-duction in three dimensions - Reproduction of substantial part of copyright work - Proof of copying - Distinction between concept and form - Section 9(8)

20 defence - Finding of infringement by trial judge - Injunction granted - Appeal allowed by Court of Appeal - Appeal to House of Lords - Judgment of trial judge restored - Judgment of Court of Appeal set aside.

In the House of Lords:

Copyright Act 1956, sections 3(5)a, 9(8), 48(1) and 49(1).

25 In the Court of Appeal:

Copyright Act 1956. sections 1(1), 1(2), 3(1)a, 3(5)a, 9(8), 48(1) and 49(1).

552

L. B. (plastics) Limited v. Swish Products Limited [1979] R.P.C.

In the High Court:

Literary Copyright Act 1842.

Fine Arts Copyright Act 1862.

Copyright Act 1911 sections 1(1), 35(1).

Copyright Act 1956 sections 3(1), 3(2), 3(3), 9(8), 48(1).

The plaintiffs were the designers and manufacturers of a plastic knock-down drawer system known as the Sheerglide. The Sheerglide design was from the time

5

it first went into production a success in the field of knock-down plastic furniture. Much of the plaintiffs' business was done with furniture makers who purchased Sheerglide drawers in component form for the purpose of fitting them into carcases 10 of their own manufacture. One such customer was G.P. Ltd., a company linked with the defendants by common ownership of shares. In December 1972, after the Sheerglide had been in production for approximately fourteen months, G.P. Ltd.' suggested that the defendants might embark upon the production of a knock-down drawer system suitable for use in furniture carcases produced by G.P. Ltd. G.P. Ltd. IS required any drawer produced by the defendants to be interchangeable with the Sheerglide drawer in G.P. Ltd.'s existing range of carcases. Between 1972 and 1975 the defendants made four separate attempts to produce an acceptable design. In March 1975 the defendants produced a design known as the Swish design.

The plaintiffs sued for infringement,of artistic copyright in the production draw- 20 ings which depicted their Sheerglide design. A number of the features present in the Swish design were also present in some one or more of the defendants' earlier un-successful designs. Although they admitted having had access to the plaintiffs' products and those of other manufacturers, the defendants denied copying and further denied that the Swish design reproduced anything more than the idea behind 2S the Sheerglide design. In addition they relied on the defence afforded by section 9(8) of the Copyright Act 1956.

At first instance it was held that the defendants had infringed the plaintiffs' copy-right by copying many of those features which gave the Sheerglide drawer its specific individuality; it Was further held that the defendants were unable to resist a 30 finding of infringement by relying on section 9(8) of the Copyright Act 1956. In so holding, the trial judge rejected the defendants' contention that the plaintiffs' pro-duction drawings were neither original nor artistic within the meaning of the Copyright Act 1956. The defendants appealed. It was conceded in the Court of . Appeal that artistic copyright subsisted in the drawings relied on by the plaintiffs 3S and that the plaintiffs were the owners of that copyright. The Court of Appeal held that the plaintiffs had failed to discharge the onus of establishing that the defendants had copied the Sheerglide design to any substantial extent, and held in the alternative that section 9(8) of the Copyright Act 1956 afforded the defendants a defence against the claim for infringement of copyright even assuming that to have been established. 40 The plaintiffs appealed to the House of Lords ..

Held: Allowing the appeal.

(1) There was a striking general similarity between the defendants' drawer and

!J53

[No.2S] House of Lords

the plaintiffs' drawer and this, combined with proof of access to the plaintiffs' pro-ductions, established a prima facie case of copyright infringement which the defendants had to answer,'

(2) The trial judge's finding of copying was not based solely on an inference from 5 similarity since by their evidence the defendants had not only failed to demonstrate

any alternative to copying or to prove that all they had done was to adopt a con-cept, but had positively supported the charge of copying specific drawings directly or through components made from them;

(3) Section 9(8) of the Copyright Act 1956 provides a defence which only arises 10 if there has been reproduction of a part of a copyright work sufficiently substantial

to be otherwise an infringement of copyright;

(4) Whether an object would or would not appear to a non-expert to be a repro-duction of a drawing or a substantial part of it is an issue of fact to be decided by the trial judge upon a visual comparison of the object with the drawing including

15 everything written on it;

(5) A defendant who proposes to rely on section 9(8) of the Copyright Act 1956 must plead it as a defence and bears the onus of making it good at the trial,'

(6) A non-expert would, in the present case, recognise that the Swish drawer was a reproduction of the plaintiffs' original drawings and the defence under section 9(8)

20 of the Copyright Act 1956 therefore failed.

Judgment and Order of Whitford, J. restored.

Semble: The trial judge is himself entitled to act as a non-expert and compare an object with the relevant drawing in order to decide the issue of fact raised by a defence under section 9(8);

2S Sed Quaere whether evidence is admissible to prove that a non-expert would fail to recognise that points of resemblance or identity actually exist.

Observed, on proof of copying by inference from similarity:

per Lord Wilberforce:

"If indeed the (trial judge's) judgment had been based exclusively on similarities 30 perceived, or even on similarities plus opportunity and motive, it could fairly have

been described as based on inference. But this was only the first step though an important one; the next was to consider whether this inference could be displaced by evidence from the respondents showing how in fact they had arrived at their design and that they had not done so by copying. This the respondents

35 attempted, but their evidence, in the judge's view, not only failed to demonstrate any alternative to copying or to prove that all the respondents did was to adopt a concept but positively supported the charge of copying specific drawings, directly or through components made from them".

554

L. B. (plastics) Limited v. Swish Products Limited [1979] R.P.C.

Observed. on the application of section 9(8) of the Copyright Act 1956. per Lord Wilberforce :

"In relation to the subject-matter, it was, as both sides seem to have accepted, for the judge, placing himself in his position of a non-expert in relation to extruded or moulded components (see the wording of the subsection), to decide whether the 5 respondents' components appeared, or rather did not appear, to be reproductions of the appellants' drawings. For this purpose he must be entitled to compare the .objects with the drawing and, in my opinion, to take account of any written matter on the drawing . ... In performing this task the judge must also be credited with some ability to interpret design drawings; the subsection does not say the contrary, 10 and without it, the comparison could not be made. But the comparison to be made is, as I understand it, a visual comparison. The (non-expert) judge should not repeat the process which, as judge with the assistance of expert and other witnesses, he has gone through in deciding whether there has been copying or not".

per Lord Hailsham of St. Marylebone : 15

"Certainly I would regard it as a wrong approach in deciding a question under section 9(8) to enumerate dissimilarities which are really there and which a non-expert would have recognised as dissimilarities, or points of identity which are not really there which a non-expert would have mistakenly thought he saw as points of identity. There are passages in the Court of Appeal judgment which seem to me to 20 do just this. The defence under section 9(8) is concerned with points of resemblance or identity which are really there, but which the non-expert would have failed to recognise as points of resemblance or identity in the three-dimensional form with the result that it would not have appeared to him that there had been the reproduction of any substantial part of the original artistic work". 25

Cases referred to in judgments:

House of Lords:

King Features Syndicate Inc. v. O. & M. Kleeman Ltd. [1941] AC. 417. Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. [1964] 1 W.L.R 273.

Court of Appeal:

Hanfstaengl v. Baines & Co. [1895] AC. 20. University of London Press Ltd. v. University Tutorial Press Ltd. [1916] 2 Ch. 601. King Features Syndicate Inc. v. O. & M. Kleeman Ltd. [1941] AC. 417. Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. [1964] 1 W.L.R 273.

30

High Court: 3S

Leslie v.l. Young & Sons [1894] AC. 335. Walter v. Lane [1900] AC. 539. G. A. Cramp & Sons Ltd. v. Frank Smythson Ltd. [1944] AC. 329. Francis, Day & Hunter Ltd. v. Bron [1963] Ch.D. 587. Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. [1964] 1 W.L.R. 273. 40 Dorling v. Honnor [1964] RP.C. 160.

[No.i5} House of Lords

Temple Instruments Ltd. v. Hollis Heels Ltd. [1973] R.P.C. 15. British Northrop Ltd. v. Texteam Blackburn Ltd. [1974] R.P.C. 57. George Hensher Ltd. v. Restawile Upholstery (Lanes) Ltd. 11975] R.P.C. 31. Robertson v. Lewis [1976] R.P.C. 169.

5 Appearances:

In the Chancery Division:

sss

John Hall, Q.C., David Gibbins and Nicholas Jones instructed by Faithfull, Owen & Fraser appeared for the plaintiffs; Bernard Budd, Q.C., lohn Drysdale and C. D. Whittle instructed by Bird and Bird appeared for the defendants.

10 In the Court of Appeal :

John Hall, Q.C., David Gibbins and Nicholas lones instructed by Faithfull, Owen & Fraser appeared for the plaintiffs/respondents; Douglas Falconer, Q.C., and C. D. Whittle instructed by Bird and Bird appeared for the defendants/appellants.

In the House of Lords:

15 William Aldous, Q.C. and David Gibbins instructed by Faithfull, Owen & Fraser appeared for the plaintiffs/appellants; Douglas Falconer, Q.C. and C. D. Whittle instructed by Bird and Bird appeared for the defendants / respondents.

The drawings which follow were referred to in the judgments.

The photographs which form part of this report illustrate the items referred to in 20 the text.

556 L. B. (plastics) Limited v. Swish Products Limited [1979] R.P.C.

.. WHlU tlQlIlotl4 " W.u-e.'(

Plaintiffs'--drawing LBP /LB/479A

a

[No. 25]

25-B

House of Lords

Defendants' drawing DB52

D (3 b1

E .... 'I'!'.Iceo CK'-4h'.-A

Defendants' drawing DB51

557

558

L. B. (Plastics) Limited v. Swish Products Limited [1979] R.P.C.

Defendants' drawing DB56

559

[No. 25] House of Lords

560

L. B. (Plastics) Limited v. Swish Products Limited [1979] R.P.C.

561

[No. 25] House of Lords

562

L. B. (Plastics) Limited v. Swish Products Limited [1979] R.P.C.

563

[No. 25] House of Lords

564

L. B. (Plastics) Limited v. Swish Products Limited [1979] R.P.C.

617

[No. 25] House of Lords Lord Wilberforce

The respondents say you should exclude the preparatory labour behind a drawing when deciding where originality lies. Infringement of a final working drawing would depend on taking parts of it which cannot be found in previous preparatory sketches. The Act requires no such distinction between the part of a drawing; it is

!S contrary to common sense and to authority to recognise it. The plot for a story and the chapter headings are written down before the book is written. (Lord HaiIsham: The argument is difficult to translate into the context of literary works; hence its sophistication.) The argument was based on passages in the Ladbroke case; that case was concerned with a compilation that included non-copyright material. The

10 observations made cannot be applied like statutes and in particular they do not affect the position in this case. Whitford, J. dealt with the anomalies that can arise. Merely because some cases enjoy no protection is no reason to cut down protection where it exists.

Cur. Adv. Vult.

Lord WiIberforce.-The appellants claimed, in this action in the Chancery IS Division, that the respondents had infringed their copyright in certain drawings

relating to plastic knock-down drawers. A "knock-down drawer" is a furniture drawer made of components, usually delivered unassembled, which the customer puts together, and which he can if he wishes, dismantle. Out of ten drawings the subject of this claim, the trial judge (Whitford, J.) held that there had been infringe-

20 ment as regards two, numbered and known as "433" and "479A". The Court of Appeal reversed his judgment; the appellants now ask to have it restored.

It is not now disputed that the two drawings are entitled to copyright as artistic works within section 3 of the Copyright Act 1956 nor that the appellants are the owners of this copyright. Nor I think is it disputed that the drawings are "original"

2S artistic works as that word is used in this Act-comporting not "originality" but that the work is the product of the author's work and labour. The only issue is whether the respondents have infringed the copyright by "reproducing the work in any material form" (section 3(5)(a». An infringement occurs if there has been repro-duction of "a substantial part of the work" (section 49(1».

30 The infringement alleged consists of the reproduction of the drawing, or of a substantial part thereof. by the manufacture of three components known as LG9, LGLlO and LGLI1. Since these alleged reproductions are in three dimensions whereas the drawings are in two, it becomes necessary to consider the provisions of section 9(8) which reads:

3S "The making of an object of any description which is in three dimensions shall not be taken to infringe the copyright in an artistic work in two dimensions, if the object would not appear, to persons who are not experts in relation to objects of that description, to be a reproduction of the artistic work".

It is important to bear in mind, as has not invariably been done in the course 40 of this case, that this is not a patent action. The appellants did, it is true, make some

attempts to patent some elements in their drawer, but no grant was made. The defendants too, at the critical time, thought that there might be some patent pro-tection and were concerned to avoid it. But this was not a case of patent infringe-ment, actual or potential. The issue is simply one of copying. No question of novelty

618

Lord Wilberforce L. B. (plastics) Limited v. [1979] R.P.C. Swish Products Limited

or originality, in the patent sense, arises and so it is not necessary to enter in any great detail into the mechanics of the appellants' drawer; some two-dimensional description of it is required in the interest of narrative clarity.

There are three critical components:

(1) the sides, (ii) the back corner pieces, (iii) the front facia pieces.

Once the appellants had succeeded in producing a successful knock-down drawer (theirs is called "Sheerglide") its design and construction seems very simple. But,

5

as commonly happens and as the history shows, a great deal of effort and ingenuity has gone into devising these key components. The requirements are that they fit together neatly and firmly; that they can be dismantled without difficulty; that they 10 can be easily mass-produced in plastic by extrusion or moulding; that they are economical in the use of material; that they are adaptable to the requirements of furniture manufacturers, who order them for insertion in their furniture. Most other attempts which have been made at designing such drawers have failed to meet one or more of these objectives, or at least have realised them less well than the 15 appellants with Sheerglide.

(i) The sides, which can be cut to any length, consist of extruded plastic panels. On the outer side in the middle is a horizontal groove ("integral runner rebate") into which there will fit a horizontal runner to be placed by the furniture manufacturer on the piece of furniture into which the drawer is to 20 go. On the inner side at the bottom is a smaller horizontal groove ("integral baseboard groove") into which the manufacturers can fit the base, usually hardboard, of the drawer.

(ii) The back corner pieces. These are of moulded plastic and are designed to join sides and back. This is effected by spigots which fit into the end of the 25 side, and back extrusions. They are held in place by means of rectangular projections or studs, placed on flexible tongues which latch into holes in the outside wall of the extrusions. These projections are called "detents" and the appellants' system is known as external latching.

Several varieties of fixing have been tried by designers. One, of considerable 30 ingenuity, was tried by the respondents and consisted of an internal latching (i.e. inside the extrusions) effected by a flexible hook which clicked over an internal web in the extrusions; this was known as "hook-tenon". Another, adopted by the respondents in the allegedly infringing component, consisted in using a triangular detent instead of a rectangular one, located on a somewhat different tongue. This, 35 like the appellants', operated externally.

(iii) The facia pieces. These moulded components fit into the front end of the side extrusions. Their purpose is to provide a base for the front facia of the drawer which is provided by the manufacturer. These pieces, too, are latched, externally, into the side extrusions by the use of rectangular (or in the 40 respondents' case triangular) detents. The piece is provided with holes for the screws fixing the facia. A feature which has attracted attention is that the outsides of these holes are recessed (or "countersunk") so as to accommodate

619

[No. 25] House of Lords Lord Wilberforce

debris produced by the screws. Another important feature, in the interest of simplicity and economy, is that these pieces should be "unhanded", i.e. usable on either side.

My Lords, though reference was made, quite properly, to authorities on copyright 5 law, I do not think that the present case (apart from the defence based on section

9(8» raises or involves any legal issue. There can be no copyright in a mere idea, so if all that the respondents had done was to take from the appellants the idea of external latching, or the "unhanding" of components, or any other idea implicit in their work, the appellants could not complain. Nor is there infringement if a person

10 arrives by independent work at a substantially similar result to that sought to be protected. The protection given by the law of copyright is against copying, the basis of the protection being that one man must not be permitted to appropriate the result of another's labour. That copying has taken place is for the plaintiff to establish and prove as a matter of fact. The beginning of the necessary proof normally lies

15 in the establishment of similarity combined with proof of access to the plaintiffs' productions.

It is obvious to the eye, testified by expert witnesses, and held by the judge, that, though on inspection there are differences, there is a striking general similarity between the respondents' drawer and those of the appellants. Moreover, it is clear,

20 and was so held by the judge, that the respondents had the opportunity to copy the appellants' drawer. They had specimens of the appellants' components (based of course on the appellants' drawings) in their possession, and later, before finally designing their own, they had re-drawings and even tracings of some of the appel-lants' drawings passed to them by an associated company, Grovewood, to whom

25 the appellants supplied Sheerglide drawers. These components and drawings the respondents must have known were components and drawings of the appellants. These facts establish a prima facie case of copying which the respondents had to answer. They could do this by bringing forward some alternative explanation of the similarities such as would convince the judge. His task would then, on the evidence

30 as a whole, be to decide whether there had been copying or not.

On these issues a number of witnesses were heard. There was the respondents' technical director (Mr. Mercer), the manager of the respondents' development department (Mr. Cox) and the respondents' draughtsman responsible for making the first drawings of the respondents' design (Mr. Lewis). They were examined and

35 cross-examined at length. The judge made careful assessments of their evidence. Of Mr. Mercer he said that he could not regard him as a wholly reliable witness. At a certain important meeting, in the face of Mr. Mercer's denial, the judge held that Mr. Mercer was given the appellants' extrusions and mouldings, and he said that he could not imagine why Mr. Mercer should deny this unless it be from some sense

40 of guilt. Of Mr. Cox and Mr. Lewis, the judge said that he did not find their evidence entirely satisfactory. In his judgment he quoted verbatim extensive passages from their evidence. He took into account the differences which undoubtedly exist between the two drawers. His conclusion was thus expressed:

"Taking all these differences into account they are not, in my view, sufficient 4S to take the [respondents] out of infringement if all the other points of similarity

were taken by them from anyone of the [appellants'] drawings through copying a Sheerglide drawer. In my judgment they undoubtedly were so taken".

620

Lord Wilberforce L. B. (plastics) Limited v. [1979J R.P.C. Swish Products Limited

Coming as it does in a passage in which he was assessing the evidence of Mr. Cox and Mr. Lewis, this can only be read, in my opinion, as a finding, and one of the clearest character, that in this evidence there had been copying of the appellants' designs.

My Lords, I would agree, of course, that if a witness denies a fact (in this case 5 copying), disbelief of this witness does not necessarily prove the contrary (i.e. copy-ing). But that is not this situation. It is clear beyond doubt, from reading the passages quoted by the judge from the evidence of Mr. Cox and Mr. Lewis that there was ample evidence to support a positive finding of copying by the respondents. They had the opportunity, they had the motive. ("Considerable time and money can be 10 saved if we can adopt a similar principle to the L.B. (Plastics) design"-Mr. Cox's letter of 15th April 1975). They were even concerned lest there should be infringe-ment of some patent or registered design. They instructed their patent agents to make searches, and they made minor changes (e.g. the triangular detent) which might well be thought to be colourable variations, to avoid this. They seem, indeed, 15 not to have thought of the possibility of copyright infringement, but this makes it more rather than less likely that they were content to use the appellants' drawings. The rapidity with which Mr. Lewis produced the critical drawing (DB51) could only be explained on the basis of instructions to take it from the appellants' drawing with minimum modifications. 20

In the light of these findings, then. I would regard this so far as a plain case. It is not suggested that the trial judge misdirected himself or erred in law; he has made clear findings, supported by evidence, and based on his estimation of the witnesses on what is a question of fact. Such findings it is not normally the function of the appeal process to interfere with. 25

How then, it remains to ask, did the Court of Appeal reach the conclusion that his judgment should be set aside? I summarise, I hope adequately, the basis of their decision as follows. The court made a careful analysis of the similarities and differences between the respondents' design and the appellants' drawings. In par-ticular they traced the development of the respondents' drawer from (omitting the 30 "fir-tree") three earlier projects, the first of which had made use of external latching, the second and third of which adopted internal latching. The third, called the hook-tenon design (to which I have previously referred), went into commercial production and was marketed but was not successful. The respondents thereupon, having worked on these projects for over two years, decided to abandon internal latching and to 35 "revert" to an external locking device. They were aware of the appellants' design and adopted the "concept" of it. But they did not copy that design, except for one feature namely the "countersinking" in the facia piece, which was not a substantial part of the appellants' copyright drawing. Their conclusion was expressed in the folIowing passage: 40

"This analysis demonstrates that similarities between drawing 479A and the Swish design may be attributed to one or other of the folIowing causes: (1) the need for interchangeability, (2) the adoption by the defendant of the concept of the plaintiffs' device without actual copying, (3) coincidental similarity between a feature of drawing 479A and a feature of the Swish design derived 45

5

10

621

tNo.25] House of Lords Lord Wilberforce

from an earlier design of the defendants, and (4) actual copying from a Sheer-glide drawer. It also demonstrates that the Swish design incorporates a number of features, some of less importance but some of considerable importance, which derive from earlier designs of the defendants and differentiate the Swish design from drawing 479A. Finally, it demonstrates that in those respects in which the Swish design in its final form differed from drawing DB51 it moved away from the design of drawing 479A and did not imitate it.

In our view, this analysis of the similarities and dissimilarities of the Sheer-glide and the Swish designs does not support Whitford, J.'s inference that the defendants copied the latter from the former. It seems to us. on the contrary, that the analysis indicates that the defendants adopted the concept of the plain-tiffs' device for a corner clip and facia clip but did not actually copy the plaintiffs' corner clip or facia clip in any respect except the reverse counter-sink".

15 The respondents' counsel in this House substantially adopted this line of argument. In a detailed but also lucid argument, he invited your Lordships to examine the earlier projects of the respondents in detail with a view to showing that many, indeed numerically most, of the features ultimately found in the respondents' design came from the respondents' independent work and not from any design or product

20 of the appellants. I shall not list these features which are clearly and well set out in the respondents' printed case. He completed the argument by an examination of modifications made by the respondents after they had decided to adopt the "concept" of the appellants' design. These, it was contended. showed a movement away from. rather than towards. the details of the appellants' design.

25 Finally, it was said that the similarities between the appellants' drawer and that of the respondents could be explained by the need for interchangeability, i.e. the necessity that the drawer designed by the respondents should fit into the furniture to be provided by Grovewood. But since, as to my mind was clearly demonstrated, the latter was devised to accommodate the appellants' drawer (not the drawer

30 designed to fit the furniture). this argument loses any force. Indeed, if anything. it tells against the respondents by suggesting a casual connection between the design of their drawer and (via the Grovewood furniture) the appellants' drawer.

On the main argument. the reason why I am unable to follow the reasoning of the Court of Appeal is that it effectively ignores the evidence of the witnesses as

35 assessed by the judge. His decision does not, in my estimation. rest upon inference. but, which is not the same thing. upon findings of fact based upon what the witnesses said and the way in which they said it. This is not a mere verbal point for the judgment states in terms that there was no direct evidence of copying and that the judge's finding of copying depends upon inference from similarity. If indeed

40 the judgment had been based exclusively on similarities perceived. or even on similarities plus opportunity and motive. it could fairly have been described as based upon inference. But this was only the first step though an important one; the next was to consider whether this inference could be displaced by evidence from the respondents showing how in fact they had arrived at their design and that they had

45 not done so by copying. This the respondents attempted. but their evidence. in the judge's view, not only failed to demonstrate any alternative to copying or to prove that all that the respondents did was to adopt a concept but positively supported

Lord Wilberforce L. B. (plastics) Limited v. 11979] R.P.C. Swish Products Limited

the charge of copying specific drawings, directly or through components made from them. For this fundamental reason, and because I find the judgment of the trial judge entirely satisfactory, fair and convincing, I am of opinion that it must be restored, and I hope that it will not be considered discourteous to the thorough and expert arguments of learned counsel if I do not follow them into an analysis of the S modifications made by the respondents to the basic design copied, as I hold that it was, from the appellants. The adoption of these modifications does not negate the antecedent copying, nor reduce the extent of the reproduction to anything less than substantial. Substantiality being a question of quality rather than quantity, there is no doubt, in the judge's words, that the respondents "copied many of those things 10 which give it its specific individuality". These he held, in my opinion rightly, as not, taken together, being less than substantial.

It is now necessary to deal with the defence under section 9(8) already cited. This defence was not pleaded, and no evidence was called upon it, but it was allowed to be put forward and the judge dealt with it. The subsection introduces, in the context 15 of reproduction in another dimension, a test which may be described as a test of lay recognition-one well known and applied in many different contexts in American law-for example in relation to dolls or toys made after comic strip characters, or in relation to musical reproductions. It inevitably gives rise to difficulties as to the nature of the evidence which may be received, and as to the degree of non-expertise 20 to be attributed to the judge. The subsection applies by way, and only by way of defence, i.e. after the issue of copying has been decided, and on the assumption that it has been decided in favour of the plaintiff. It is for the defendant to make it good. In relation to the subject-matter, it was, as both sides seem to have accepted, for the judge, placing himself in his position of a non-expert in relation to extruded or 25 moulded components (see the wording of the subsection), to decide whether the respondents' components appeared, or rather did not appear, to be reproductions of the appellants' drawings. For this purpose he must be entitled to compare the objects with the drawing, and, in my opinion, to take account of any written matter on the drawing. (In fact the drawing 479A contains the general description "Mould- 30 ings and Extrusion for L.B. Drawer System" with separate descriptions of "Extrusion", "Corner Moulding" and "Front Moulding" and all are supplied with dimensions, differing in some cases from those of the components, but not so as to make visual comparison difficult or to make such reproduction as can be seen less than substantial). In performing this task the judge must also be credited with some 35 ability to interpret design drawings: the subsection does not say the contrary, and without it the comparison could not be made. But the comparison to be made is, as I understand it, a visual comparison. The (non-expert) judge should not repeat the process which, as judge with the assistance of expert and other witnesses, he has gone through in deciding whether there has been copying or not. The judgment of 40 the Court of Appeal in some passages seems to have done precisely this. On this defence, the respondents failed to persuade the judge, that acting in this way, and applying the visual comparison between the object and drawing which the subsection requires, the three relevant components, LGL9, LGLlO, LGLll were not reproduc-tions or reproductions of a substantial part (section 49(1» of the drawing 479A. I am 45 of the opinion that his conclusion on this point, again an issue of fact as to which he applied the correct test,-cannot be disturbed. In so far as I am entitled for myself to carry out the statutory process, I should come to the same conclusion.

I would allow the appeal and restore the judgment and order of Whitford, J.

[No. 25] Mouse of Lords

623

Lord Hailsham of St. Marylebone

Lord Hailsham of St. Marylebone.-In this case I am sure that the appeal should be allowed and the judgment of Whitford, J. restored. Since in all important respects my opinion coincides with that of my noble and learned friends, and, since in my view the questions at issue are mainly of fact it may be considered that a separate

5 opinion is unnecessary, but I feel bound to put my own reasoning as shortly as I can out of respect for the argument of counsel and the very careful judgment of the Court of Appeal from which I have the misfortune to differ.

The proceedings were brought by the appellants as plaintiffs claiming the usual remedies for infringement of copyright. The copyright alleged to be infringed was

10 in certain two-dimensional drawings, and the infringement was alleged to consist in three-dimensional products manufactured by the respondents. Of the various issues raised at different stages of the proceedings only two substantial questions survive apart from one short but sophisticated argument for the appellants with which I will deal at the end of this opinion. The two questions are whether the

IS respondents' three-dimensional product reproduces a substantial part of the appel-lants' two-dimensional drawings, and if so, whether, notwithstanding such repro-duction, the respondents can raise a defence under section 9(8) of the Copyright Act 1956. In the ultimate analysis, both are, it seems to me, questions of fact. Both were decided in the appellants' favour by Whitford, J. and both were decided in the

20 respondents' favour in the Court of Appeal.

The facts are as follows. Both parties are manufacturers of plastic extrusions and mouldings. Prior to the matters in dispute the respondents seem to have specialised in curtain rails and ancillary articles. In particular they had never developed a plastic drawer designed as a furniture component. By contrast, in 1971, after about

25 two years' travail consumed in design and development before the sequence of events under discussion, the plaintiffs had designed and marketed a design for the main components of just such a drawer. It was called a knock-down drawer, because after assembly it could be disassembled. The drawings, now admitted to be original artistics works within the meaning of section 3 of the Copyright Act 1956, and the

30 property in which is now admittedly vested in the appellants, were the designs for the manufacture by extrusion or moulding of the components of the drawer so far as these were of plastic. A number of drawings is involved, but for the purpose of the present appeal it is sufficient to refer to those numbered 433 (an exploded per-spective sketch, and the parent of the rest), and 479 (developed into 479A and

35 subsequently modified by 826B). The components were delivered to the appellants' customers separate and flat. The customers added a bottom board (which fitted a groove in the components) and a front to conform with the design of the furniture. The drawers themselves consisted of two extruded side pieces, moulded facia pieces to take the front which was attached by screws, countersunk in front, clips to attach

40 the side pieces to the back of the drawer, and, of course, the back to the drawer itself. The clips and the facia pieces were attached to the side pieces and back by spigots and latched into place by rectangular detents fitting externally into corres-ponding holes in the extrusions. The side extrusions were interchangeable (un-handed) as between left and right, and to enable this to be achieved the facia pieces

45 had a groove to fit the bottom board at each end (top and bottom). The side extru-sions fitted into the furniture by means of a rebate centrally placed in the extrusion which corresponded with a runner in the hollow carcase. Like all successful designs the design was deceptively simple and it was also attractively cheap. But like all

624

Lord Hailsham of St. Marylebone

L. B. (plastics) Limited v. [1979] R.P.C. Swish Products Limited

such designs, much skill, labour and investment had gone into its development over the two years of travail. By the time of the matters in dispute the range of the appellants' products, sold under the name of "Sheerglide", were the market leaders and commanded an annual turnover of £2,400,000. In addition to their own products, the appellants designed and partly manufactured rather similar, but different designs 5 for mouldings to fit the products of other manufacturers of extrusions, notably Mackenzie King and Boulton & Paul.

By 1972 the appellants had acquired a customer called Grovewood Ltd. who made furniture to take the appellants' drawers on a substantial scale. It is important to emphasise that in this trade, it is the drawer which establishes the particular 10 contours in the carcase of the furniture and in particular the position of the runner for the drawers, and not vice versa, and at the hearing before us the appellants were able to show that this was done by Grovewood after receiving a number of samples but before they placed their first quantity orders. The reason for this is, no doubt, that although they can be of different lengths and widths, being mass produced, the 15 drawers come in certain standard sizes to fit the furniture of more than one manu-facturer. Thus it is the interior of the furniture which is made to fit the drawer and not vice versa. To place their orders with the appellants Grovewood had to rejig their machinery to take the appellants' drawers, and thereafter would require drawers of certain critical dimensions broadly identical with the appellants' design 20 if they were to avoid further capital expenditure by rejigging their machinery again.

At all material times, Grovewood were members of the same group as the respondents, and at some short time after they began to purchase the appellants' drawers in quantity, Grovewood began suggesting to the respondents that they should develop a range of plastic drawers to fit their furniture in order that their 2S valuable custom might be kept within the group. It was an essential condition of Grovewood placing orders with the respondents that the new drawers should be interchangeable with the Sheerglide. Like the appellants, the respondents found difficulty in developing such a drawer but at the beginning of 1975 after four more or less unsuccessful attempts extending over two years, as the result of certain 30 crucial decisions to which I will revert, they at last succeeded in producing a drawer called the "Swish" which satisfied Grovewood requirements. In contrast to their previous period of frustration this drawer was developed within three months of the decisions being taken. Unhappily the appellants claimed that it also infringed the copyright of their drawings and these proceedings have been the result. The first 35 question to be decided in this appeal is whether the Swish drawer developed from a respondents' drawing numbered 51 in the exhibits reproduces a substantial part of the Sheerglide drawings. The appellants claim that it was copied but with modifica-tions incorporated afterwards. The respondents' explanation was that it was developed independently from their last and least unsuccessful prior effort referred 40 to during the hearing as the "hook-tenon" design.

At first sight and, despite numerous difficulties, the Sheerglide and the Swish designs are strikingly similar to one another. The trial judge thought so. Two expert witnesses of repute called by the appellants, whose evidence the trial judge accepted, said they were so alike as to raise a presumption of copying. Although they dis- 45 counted the fact for reasons which I will examine later, I do not think that the Court of Appeal were at all inclined to dispute the likeness. My own view, fortified by this

{No. 25) Bouse of Lords

625

Lord Hailsham of St. MaryJebooe

concurrence, is that they were so alike as to give rise to the shift in the evidential burden described by Lord Wright in King Features Syndicate Inc. v. 0 & M. Kleeman Ltd. [1941] A.C. 417 when he said at page 436:

"Here the only evidence of actual copying, direct or indirect, is similarity 5 with regard to the figure, which is a substantial part of the sketch, between the

copyright work and the alleged infringement. I think, however, that where there is substantial similarity, that similarity is prima facie evidence of copying which the party charged may refute by evidence that, notwithstanding the similarity, there was no copying but independent creation".

10 I think it legitimate to quote this passage since, after completing the chain of reasoning which I shall be examining presently, the Court of Appeal based their judgment on the burden of proof when they stated their conclusion to be that:

"In our jUdgment, the plaintiffs have failed to discharge the onus of estab-lishing that the defendants have copied the Sheerglide drawer, and so indirectly

15 drawing 479A, to any substantial extent".

The Court of Appeal were able to do this because they seem to have thought that as in the King Syndicate case, supra, the only evidence of copying was the similarity and that in consequence Whitford, J.'s decision was only an "inference" based on analysis of similarities and differences that the respondents copied their product

20 from the drawing, and for this reason the Court of Appeal seem to have concluded that they were entitled to draw a· different "inference" from a more careful analysis of similarities and differences between the two designs.

I will now attempt to show why, in my view, in this the Court of Appeal were in error. Although the similarities noted by the judge and the plaintiffs' witnesses and

25 the dissimilarities relied on by the Court of Appeal were present, Whitford, J.'s judgment was not based as in the King Syndicate case only on inference from similarity but on that plus fairly direct evidence of copying and upon his rejection of the alternative explanation offered by the defendants' oral witnesses whom he characterised as being unreliable both in the content of their testimony and their

30 demeanour in giving it. I do not think the Court of Appeal paid sufficient attention either to the direct evidence of intention to copy and actual copying or to admissions of a very damaging kind made by the respondents' witnesses, and the rejection of the reliability of their testimony concerning their alternative explanation which the learned judge was best in a position to assess.

35 Whilst, of course, they might not be so significant with the similarities, the con-temporary documents disclosed on discovery are really very striking even without the admissions extracted from the respondents' witnesses and the rejection of their alternative explanation by the judge. By the spring of 1975 the respondents were beginning to be put under considerable pressure by the appellants' customer,

40 Grovewood, their sister company.

They had spent two years since the first advances to them had been made. They had run through four unsuccessful designs, referred to in the proceedings as the Armstrong, the fir-tree, the hook-latch, and the hook-tenon. Of these the hook-tenon 25-H

626

Lord Hailsbam of st. Marylebone

L. B. (plastics) Limited v. Swish Products Limited

[1979] R.P.C.

was partly successful and went into production. But it was not competitive in price and it would not do for Grovewood. It was therefore urgently necessary for the respondents to act and to act quickly. They did so. After the "Armstrong" design. all the respondents' designs had attempted to latch the clips into the extrusions by means of some internal device. It therefore proceeded on a principle different from 5 that of the Sheerglide range. The internal latching was tidier and favoured by their Technical Director. Mr. Mercer. who gave evidence for the respondents at the trial, but whose evidence was severely criticised by the trial judge. and. in so far as it purported to afford an explanation, rejected, it would seem entirely. Nevertheless. though they form no part of the appellants' case of infringement. there were 10 similarities between the appellants' design and the unsuccessful range of respondents' designs. which do not seem to have been wholly coincidental. However this may be. under the pressure of time and commercial advantage, the respondents proceeded in early 1975 to decide, after a market survey. to abandon their previous efforts to devise an internal latching system of their own, and to follow the L.B. "design", 15 "principle", or "pattern" but with "minor changes". If they had not already received them, they were supplied by Grovewood with examples of the L.B. product. coupled with actual tracings or copies of the Sheerglide drawings now alleged to be infringed. Their market survey had disclosed that the Sheerglide was the market leader and showed positive advantages over their rivals. Their market researcher reported: 20

"In view of the limited time I have had to collect information for this survey and the fact that L.B. (Plastics) seem to have the most popular drawer to date, it would seem logical to follow their pattern". (sic. emphasis mine) "It should be remembered however, that L.B. have a very strong hold on the market and when designing we should make strenuous efforts to better their design". 2S (emphasis again mine)

In view of this. it is not surprising that the appellants' counsel should suggest that this is exactly what happened. He contended that the basic "design" or "pattern" of Sheerglide was followed and copied from the drawings and drawers which were available and that any modifications were introduced and later inspired by a desire 30 to better the design and offer "minor changes" to avoid patent infringement, largely explaining the dissimilarities noted by the Court of Appeal. It is obvious from the evidence. and it was so found by the judge. that the danger of copyright infringe-ment was never present to the respondents.

Before the decision to commission the market survey had been taken, at the end 35 of March 1975, the head of the design and development team had written:

"I have spoken to"-the respondents' patent agent-"regarding the possibility of using the L.B. principle," (sic, emphasis mine) "in part or in whole", (emphasis mine) "for a corner bracket and front fixing bracket ... I also raised once again . . . the possibility of minor changes to the design" (sic, emphasis 40 again mine) "which could possibly get around any patents and registered designs which they or others may have on this type of fixing principle".

To my mind this language illustrates as well as anything could both the intention to copy, the alertness to the danger of patent infringement, and the blindness to the

tNo.25] House of Lords

627

Lord Hailsham of St. Marylebone

possibility of copyright infringement which seems to have animated the respondents from March 1975 onwards.

But this is not all. After the receipt of the market survey report the same author wrote directly to the patent agent as follows:

5 "As I stressed on my visit to you this matter is extremely urgent and any guidance you can offer in order to help decide whether we should risk changing to the new proposed design would be very much appreciated. Considerable time and money can be saved if we can adopt a similar principle (sic) to the L.B. (Plastics) design". (sic).

10 Apart from the obvious desire to copy the "principle". "design". or "pattern" with "minor changes" evinced in the above extracts there is again shown the blind-ness to the law of copyright combined with alertness to the danger of patent infringe-ment to which I have already drawn attention. But the most important points to be observed in the last of these three extracts is the urgency of the matter as viewed

15 from the respondents' viewpoint, and the time and money which the design team rightly appreciated would be saved if the appellants' "principle". "design" or "pattern". whatever these words may mean, were adopted. or, not to put too fine a point on it. copied or taken. from the appellants.

The matter does not quite stop there. As I have said. Grovewood had supplied 20 the sister company with actual tracings of the appellants' drawings and. if they had

not already got them, examples of the appellants' range of products. Coupled with the similarity of design, the availability of these objects. and the short time taken to achieve complete success. the inference seems almost irresistible that there was actual copying, and in fact in one apparently trivial respect the Court of Appeal

25 was driven to accept that there was. In the screwholes in the facia pieces were two small countersinks or recesses which. as the appellants' evidence showed. they had themselves developed as the result of experience in order to accommodate the debris or sawdust produced by sinking the customers' connecting screws through the sup-pliers' facia pieces into the customers' front piece. This countersink is reproduced

30 in the "Swish" drawer. and with regard to it the Court of Appeal said this :

"This reverse countersink has. we think. clearly been taken by the defendants from the plaintiffs' design. To this extent we think the defendants should be held to have copied the plaintiffs' design".

The Court of Appeal. however. went on to hold (quite rightly in my opinion) that 35 this in itself was trivial detail, and certainly not by itself "a substantial part" of the

appellants' work. But this seems to me to miss its entire significance. If the respondents' design. as to the role of copying in which such an abundance of prima facie evidence exists. reproduces the appellants' design down to an apparently trivial detai1like this, does this not shed a flood of light on the real source of the more sub-

40 stantial resemblances? Is it not quite incredible that the substantial resemblances had an independent origin when a small detai1like this was directly copied? To my mind the question has only to be asked to be answered. Certainly the respondents' counsel, directly challenged, was unable to offer the smallest innocent explanation

628

Lord Hailsham of st. Marylebone

L. B. (plastics) Limited v. Swish Products Limited

[1979] R.P.C.

of this point of identity and only asked your Lordships to attach no importance to such an apparently small matter. I find myself unable to do so.

Before I leave the documents I must draw attention to one other comparatively trivial matter which seems to me equally to reinforce the argument. The appellants were able to point to a document disclosed by the respondents in which they had 5 actually superimposed a tracing of the appellants' drawing on one of their own. obviously for the purpose of comparison. Their own explanation was that this was just to correct to the minutest degree the intricate dimensions necessary to make their own drawer truly interchangeable with the appellants, the general information for which they had obtained by other means. I find myself unable so to regard it. 10 Appellants' counsel was able to establish, at least to my satisfaction, that the dimen-sions so minutely copied were precisely the critical dimensions necessary to repro-duce the appellants' design in a form acceptable to Grovewood. Substantiality for the purposes of the Copyright Act is to be judged by qUality rather than quantity. and the critical dimensions can hardly be judged to be less than substantial just 15 because they are measured only in millimetres.

I now turn to the witnesses. The respondents' answer to the formidable case presented by the appellants was that the Swish drawer was a design deliberately developed from their own hook-tenon design. albeit this was based on a totally different principle from the Swish. The judge rejected this explanation because he 20 disbelieved .the witnesses who testified to it. Of the technical director the judge spoke, amongst other strictures of:

"a general approach which displayed an understandable but undesirable desire to recall events as he would now like them to have been in contradiction of the written record" and the judge went on : 25

"I am bound to say that, having regard to a number of lapses ... which are in plain contradiction of the written record. I cannot regard him as a wholly reliable witness".

Having said that he was satisfied that he was given the appellants' actual extrusions and mouldings at a particular meeting Whitford. J. said: 30

"I cannot imagine why he should be moved today to deny this unless it be from some sense of guilt".

Of the actual developers and designers of the Swish the judge had this to say:

"I did not find the evidence of Mr. Cox and Mr. Lewis altogether satisfac-tory. I can understand their reluctance to admit to anything which might lead 3S to an adverse finding in this case. I can well understand that at the time they did what they did the idea of infringement of copyright never entered their heads. Their obvious reluctance to say anything more than they had to had the result that their manner of giving evidence was as unsatisfactory as some of the matter to which they testified". 40

{No. 25) House of Lords

629

Lord Hailsbam of St. Marylebone

The judge then went on to analyse the evidence in some detail. But it must be added that. so far from derogating from the appellants' case. some of their admis-sions actually went some way towards substantiating it.

The head of the design and development team expressly admitted that the idea 5 of going over to the "L.B. principle" had been considered as early as August 1974

but had been rejected as "too risky". albeit from the point of view of patent infringe-ment. The actual draughtsman of the respondents' working drawings was driven to admit that. whilst before making his own drawings he had studied the work of other competitors. he had "studied the Sheerglide drawer more intensively than any of the

10 others". The technical director clearly admitted that he would have had no hesitation of quoting and making components to actual drawings of the appellants supplied by Grovewood in which copyright was expressly claimed on their face "provided we cleared it through patents and copyrights and so forth. and registered design". The contemporary documents prove that. while the respondents were alert

15 to the danger of infringing patent and registered design. they were in fact blind to the danger of infringing copyright. The answer of the witness must be read in that light. and in the light of the judge's comment quoted above.

I cannot therefore but conclude that. by the time the case was complete. so far from the appellants beinR bound. as the Court of Appeal thought, to "discharge a

20 burden of proof" that the respondents had copied. the boot was heavily on the other foot. The respondents had a most formidable case to meet on the oral evidence and documents, and had sought to answer it with an alternative explanation by oral evidence which the judge had felt constrained to reject.

How then had the Court of Appeal fallen into this error? First. as I have said, they seem to have been influenced by their mistaken belief that the judgment of the

25 trial judge rested solely on inference based on the inspection of similarities and dissimilarities. But generally they seem to have been led into error by two indepen-dent but c10sely related chains of reasoning of their own. The first is the belief that, subject to the second chain. all the respondents were shown to have "adopted" was

30 the appellants' "concept" or "idea", and that this was not copyright. Of course. it is trite law that there is no copyright in ideas, and it may be that if all the respon-dents were shown to have copied from the was the idea of some sort of external latching of the moulded corner pieces and clips to the extrusions this would have been a sound enough conclusion. But, of course, as the late Professor J oad

3S used to observe, it all depends on what you mean by "ideas". What the respondents in fact copied from the appeJIants was no mere general idea. It was, to quote the respondents' own language to "fol1ow the pattern" or principle "in part or in whole" with "minor changes" to the design, with the same choice of principal members interfitting in the same way to the same critical dimensions, and even incorporating such a trivial element as the reverse countersink. and then to countercheck their

4(\ work by superimposing their own drawings on the appel1ants' to make sure that they had made no mistake.

It is here, however, that the second chain of reasoning adopted by the Court of Appeal assumes its importance. Some of the points of identity found between the drawings and the alleged infringements were due, it is said, not to the adoption of

45 the "concept" or "idea", but the insistent demand by the customer for "interchange-ability" with the appellants' dimensions so that, like the appellants' product, the

630

Lord Hailsham of St Marylebone

L. B. (plastics) Limited v. [1979] R.P.C. Swish Products Limited

respondents' drawer fitted into the customer's carcase. But this theory breaks down for at least two distinct reasons. First, and perhaps more important. it ignores the fact. which I have already pointed out. that the appellants were able to establish from the evidence that the customer's carcase was in fact a mirror image of the drawers made from the appellants' drawings and not vice versa. It was not argued 5 in this case that the respondents had inadvertently copied the appellants' drawers by designing drawers directly from the dimensions of the carcase. That might indeed set up a chain of causation in an appropriate case. But it is not what is alleged here. They did not copy the carcase. or the dimensions of the carcase. Why should they? They had been supplied with the drawers and the drawings to which the drawers 10 were made. and they copied these. Thus the requirement of interchangeability was not as the Court of Appeal assumed so much a badge of respectability as an incite-ment to copy. Secondly. the appellants showed quite clearly that the "design" or "pattern" which the respondents had copied in "whole or in part" was no more limited to the few critical measurements necessary to fit the carcase than it was 15 limited to the "idea" of external latching. There was a wide option of choice avail-able to them to achieve interchangeability, in the number of spigots, and other details. They chose to copy the appellants' design not merely in small details but in its overall shape and the relation of its parts, and thereby, apart from these proceed-ings, would have saved themselves "considerable time and money". 20

It remains to consider the defence under section 9(8). It is conceded here that the burden of proof rests on the respondents, and I am almost content to say that they have not discharged it. I am as puzzled as other judges have been by the concept of the notional non-expert" (although I am quite certain that the noun, if not the qualifying adjective could be applied to myself) and by the policy underlying 25 the subsection which, I am told, is inspired by section 258 of the Gregory Report. I am by no means as convinced as some judges seem to have been that expert evidence as to what might appear to a non-expert would be admissible, or that a typical non-expert could be called, like a witness to an alleged innuendo in libel. to say what had or had not appeared to him. At all events no such witnesses were 30 called in the present case. The defence was not pleaded, as in my judgment it ought to have been, but seems to have been used bv the respondents for the first time during the hearing in much the same way as a drowning man clutches at straws. My own belief is that where similarities are as obvious as these were to theiudge, the expert witnesses, the members of the Court of Appeal, and even to myself, section 35 9(8) stands a poor chance of success.

However, I must make one or two observations about the decision of the Court of Appeal on the point. Read with sections 48(1) and 49(1) of the Act the defence only arises if there is a reproduction of a part of the copyright work sufficiently substantial to be otherwise an infringement of copyright. When a court finds that in 40 fact there is no such reproduction, as the Court of Appeal did here. I rather doubt the possibility, and certainly the prudence, of attempting the intellectual exercise of trying to decide whether. if there were such a substantial reproduction a non-expert observer. notional or actual, could or could not have seen it. Were it to be attempted, I believe a court would be wise to specify with sufficient clarity what are 45 the points of resemblance about which they assumed themselves to be wrong and which are assumed to be reproductions of a substantial part of the copyright work. and which the non-expert is supposed to be able (or unable) to recognise in the

631

INo.2S] House of Lords Lord Salmon

three-dimensional form of the alleged infringement. This the Court of Appeal did not attempt, and, in failing to do so fell into what appears to me to be a logical, and therefore a legal, error, for they seem to me to have reproduced in their endeavours to decide the point under section 9(8) the same exercise as regards substantiality,

S concept, interchangeability and originality as they had attempted under the primary issue of copying, and I believe this to have been wrong. Certainly I would regard it as a wrong approach in deciding a question under section 9(8) to enumerate dis-similarities which are really there and which a non-expert would have recognised as dissimilarities, or points of identity which are not really there which a non-expert

10 would have mistakenly thought he saw as points of identity. There are passages in the Court of Appeal judgment which seem to me to do just this. The defence under section 9(8) is concerned with points of resemblance or identity which are really there, but which the non-expert would have failed to recognise as points of resemb-lance or identity in the three-dimensional form with the result that it would not have

15 appeared to him that there had been the reproduction of any substantial part of the original artistic work. Be that as it may, I consider that the defence under section 9(8) must fail.

It remains to me to consider the almost metaphysical point raised by junior counsel for the respondents in an admirably concise following argument. This he

20 based on what I fear is in this case an insubstantial foundation, namely a paragraph of Lord Pearce's speech on page 293 of the report of Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. [1964] 1 W.L.R. 273. The argument was that although it be conceded that the appellants' draughtsman's drawings were copyright artistic works within section 3, the information acquired by preliminary work going into the

2S drawing was not, and that what was copyright was simply the particular sketch by the particular draughtsman, which was not reproduced in the three-dimensional product. It would follow of course that a three-dimensional moulding of the present sort could not easily infringe the copyright in a drawing of this sort at all and that a two-dimensional drawing would not do so if drawn as a different sketch. The

30 advantage claimed for counsel's argument is that it reduces the danger of the con-sequences of the overlap between the law relating to registered design and patent and that relating to copyright which has long given trouble to lawyers and legislators. But we must take copyright law as we find it. I do not believe the Ladbroke passage in its context has any bearing on this case, which, unlike Ladbroke, is not a com-

3S pilation case. I believe the drawing was a team effort by the whole of the appellants' drafting and design body and all the information embodied in the drawing can, if a substantial part of the drawing be reproduced in a three-dimensional form, be considered for the purpose of deciding whether the three-dimensional form is an infringement, subject of course to section 9(8), and though I admired the elegance

40 and subtlety of the presentation, I feel bound to reject junior counsel's argument.

I therefore consider that this appeal should be allowed with costs, and the order of Whitford, J. be restored.

Lord SaImon.-I entirely agree with my noble and learned friends Lord Wilberforce and Lord Hailsham of St. Marylebone that this appeal by the plaintiffs

4S must be allowed. It is only out of respect for the unanimous judgment of the Court of Appeal in favour of the defendants and very able argument of counsel for the defendants that I add a few observations of my own.

632

Lord Salmon L. B. (plastics) Limited v. Swish Products Limited [1979] R.P.C.

Both my noble and learned friends have described, in the clearest detail (which I shall not repeat), the plastic components of "knock-down" drawers for use in furniture: they have also explained the commercial advantages of such drawers if they are designed so that they are firm and solid when assembled, really fit the furniture for which they are made, and be mass produced economically, and easily 5 assembled, dismantled and re-assembled, as the occasion requires. They can also be stored and transported far more easily and economically than the ordinary drawer.

In 1971 the plaintiffs, after spending about two years and a great deal of money in experimental work. managed to design and manufacture "knock-down" drawers which had all the advantages to which I have referred. These drawers, sold under 10 the name of "Sheerglide", were an immediate success and soon produced an annual turnover of about £21 million for the plaintiffs. By 1973 one of their principal customers was the Grovewood Company. This company and the defendants were closely connected, each belonging to the same group of companies. Naturally enough. Grovewood became anxious, if possible. to buy their "knock- 15 down" drawers from the defendants rather than from the plaintiffs, providing that the defendants could supply such drawers as would be interchangeable with the Sheerglide drawers. i.e. could be used in exactly the same Grovewood furniture as the Sheerglide drawers were being used and would be just as satisfactory in all other respects. The requirement for interchangeability was of great importance because 20 the Grovewood furniture had been designed and manufactured to receive the Sheer-glide drawers. Accordingly, unless the drawers manufactured by the defendants very closely corresponded with the Sheerglide drawers they could not be used in Grove-wood furniture unless that furniture was substantially redesigned; any such altera-tions to the furniture would have been unacceptably expensive. 25

Early in 1973, the defendants went to work in attempting to produce the plastic components of the "knock-down" drawers as required by Grovewood. Between 1973 and the early part of 1975, the defendants had made four separate attempts. each of which was unsuccessful. The defendants were then put under considerable pressure by Grovewood. speedily to produce the type of "knock-down" drawer they 30 required. Within 12 weeks from the time when the defendants came under pressure they succeeded in producing an acceptable drawer which they named "Swish". How did they succeed in producing such a drawer when all previous attempts to do so had failed? The plaintiffs' case was that the defendants had succeeded by copying the drawings numbered 433 and 479A of the SheergIide drawer and making certain 35 alterations to them. There is no dispute that the plantiffs are the owners of the copyright in those drawings and that if the defendants have copied any substantial part of them, the defendants have infringed the plaintiffs' copyright (see sections 3(5)(a) and 49(1) of the Copyright Act 1956).

No doubt. there are a good many differences between the Sheerglide and the 40 Swish design. but the many similarities between them are striking. The learned trial judge, Whitford. J .• having taken all the similarities and differences into considera-tion, came to the following conclusion:

"Taking all these differences into account. they are not. in my view. sufficient to take the defendants out of infringement if all the other points of similarity 45 were taken by them from anyone of the plaintiffs' drawings through copying frolD a Sheerglide drawer. In my judgment they undoubtedly were so taken".

633

[No. 25] House of Lords LordSalmoD

This appeal turns chiefly upon whether this conclusion of Whitford, J. was right. The Court of Appeal reversed the learned judge on the ground that his finding was based on inference and that therefore they were in just as good a position as he was to decide the cardinal issue of fact. The Court of Appeal then went on to explain

5 in detail why, in their view, the inference drawn by the learned judge was wrong.

I am afraid that I cannot agree with the Court of Appeal. Whitford, J.'s decision was based partially but by no means wholly on inference. There was, of course, no direct evidence from any witness that he had seen the defendants' employees copying the plaintifts' drawings directly or indirectly; but evidence such as that is hardly to

10 be expected, and indeed can rarely have been heard of in a case of infringement of copyright. The inference drawn by the learned judge was drawn from what I regard as overwhelming circumstantial evidence from which, in my view, no other inference could properly have been drawn. With great respect, it seems to me that the Court of Appeal cannot have appreciated the real weight of this circumstantial evidence.

15 I propose now to refer to the main features of that evidence. Firstly, it was con-ceded by the defendants that at no time had it ever occurred to them that the plaintiffs had any copyright in their drawings of the Sheerglide drawer. Accordingly. the defendants believed that there was nothing to prevent them from copying any of these drawings and using them to produce the Swish drawer. providing that they did

20 not infringe any patent or registered design by which the Sheerglide drawer might be covered. I attach considerable importance to the factor that the defendants were under the impression that there was no copyright in the Sheerglide drawer and therefore nothing under copyright law to prevent them from copying a substantial part of the plaintiffs' drawing 479A-except perhaps their amour propre. But when

2S one considers all that there was at stake, it is perhaps not surprising that the defendants overcame any qualms they may have felt in copying the plaintiffs' drawings since they believed that they were entitled to do so.

Secondly. Grovewood supplied the defendants with tracings of the plaintiffs' working drawings and also a Sheerglide drawer reproduced from drawing 479A.

30 Why if not to enable the defendants to produce, as soon as possible, drawers which would be as close as possible to and interchangeable with Sheerglide, of which Grovewood were in urgent need? From the defendants' and Grovewood's point of view. how better could the tracings and the drawer itself be used than by copying them with such changes as the defendants thought advisable?

3S There is. of course. an idea or concept behind every working drawing. It is trite law that there can be no copyright in an idea or concept; but it is hardly necessary to say that this does not mean that once the idea or concept has been translated into a working drawing the drawing cannot enjoy copyright. otherwise it would mean that copyright could not attach to any drawing; for every drawing is the child of an

40 idea or concept.

Thirdly. parts of certain memoranda disclosed by the defendants are of con-siderable importance in showing the defendants' real intentions, and strongly support the plaintiffs' case.

634

Lord Salmon L. B. (plastics) Limited v. Swish Products Limited [1979] R.P.C.

On the 27th March 1975 Mr. Cox. the defendants' Development Manager. wrote in relation to a conversation with the defendants' patent agents :

" ... I also raised once again ... the possibility of minor changes to (the plaintiffs') design which could possibly get around any patents and registered design which they or others may have of this type of fixing principle". 5

On the 15th April 1975 Mr. Cox wrote to the defendants' patent agents:

"As I stressed on my visit to you this matter is extremely urgent and any guidance which you can offer . . . to help decide whether we should risk changing to the new proposed design would be very much appreciated. Con-siderable time and money can be saved if we can adopt a similar principle to 10 (the plaintiffs) design".

On the 21st April 1975 Mr. Moxon. who carried out the defendants' market research wrote a memorandum saying:

"In view of ... the fact that (the plaintiffs) seem to have the most popular drawer to date. it would seem logical to follow their pattern. It should be 15 remembered however. that (the plaintiffs) have a very strong hold on the market and when designing we should make strenuous efforts to better their design".

It also must be remembered that at the time that the documents from which I have quoted were written. the defendants were in possession of tracings of the 20 working drawings of Sheerglide and a specimen of the drawer itself. constructed from drawing 479A; and did not appreciate that the plaintiffs had any copyright in them. It seems obvious to me that the defendants then considered that the speediest and most economical way of producing the drawer required by Grovewood was to copy the design or pattern of the Sheerglide drawer with such changes and improve- 2S ments as might be considered desirable.

The three groups of facts to which I have just referred constitute the circum-stantial evidence which. in my opinion. overwhelmingly supports the view that the defendants did infringe the plaintiffs' copyright. In the face of that evidence it would have taken the most exceptionally candid. well informed and forthcoming witness 30 to persuade any judge that the plaintiffs had not proved infringement of copyright up to the hilt. Whitford. J. relied substantially. amongst other things. on the demeanour of the defendants' witnesses. He was in a far better position than the Court of Appeal to assess the value of their evidence; and he made it plain-although with his usual courtesy-that the defendants' witnesses were unreliable 3S and unsatisfactory. and that he did not accept their evidence. The fact that the defendants' witnesses' evidence was not accepted did not. of course, prove that the defendants had infringed the plaintiffs' copyright. It. however. failed entirely to weaken in any way, indeed it strongly supported. what I regard as the overwhelm-ingly strong circumstantial evidence that the defendants were guilty of infringement. 40

The learned judge said that

"there can . . . be no doubt that the defendants' drawers . . . in all major striking similarity to the plaintiffs' drawers".

635

[No.2S] House of Lords Lord Salmon

And he was supported by the two independent and uncontradicted expert witnesses called by the plaintiffs in the view that many important features of the plaintiffs' design had been copied by the defendants. Later in his judgment the learned judge said:

5 "There is to my mind an undoubted individuality in the plaintiffs' drawer which can quite clearly be seen from this drawing (479A). The defendants plainly modelled their drawer on the plaintiffs' drawer made to 479A and copied many of those things which give it its specific individuality. I cannot regard these things taken together as being less than substantial and I find for infringement

10 upon this particular drawing ... On the evidence. the drawings preceding 479A were drawings in the line of this particular production drawing ... and to my mind there is a quite sufficient chain of causation back to (drawing) 433 in respect of which I also find infringement".

I entirely agree with the learned jUdge. I should add that when he uses the words 15 "substantial". in its context. he is clearly referring to a substantial part of the

plaintiffs' work.

It follows. I am afraid. that I am unable to accept the Court of Appeal's conclu-sion that the admittedly striking similarity between the defendants' drawer and that of the plaintiffs is attributable to the defendants having adopted the concept of the

20 plaintiffs' design rather than having "actually copied (the plaintiffs' design) to any substantial extent". For my part I have no doubt Whitford. J. was right when he found that the evidence plainly establishes that the defendants did copy a substantial part of the plaintiffs' design as they had every opportunity and motive to do. I have already dealt with the reason why they altered a considerable number of its details

2S but not enough to prevent what they did copy being a substantial part of the plaintiffs' work.

I must now turn to the defence upon which the defendants rely under subsection 8 of section 9 of the Copyright Act 1956. That subsection reads as follows:

"The making of an object of any description which is in three dimensions 30 shall not be taken to infringe the copyright in an artistic work in two dimen-

sions, if the object would not appear. to persons who are not experts in relation to objects of that description, to be a reproduction of the artistic work".

This is clearly a long stop defence. Unless the plaintiffs established that a sub-stantial part of the two-dimensional drawing 479A had been copied by the

35 defendants to produce their Swish drawer, the plaintiffs' claim for infringement of their copyright in 479A would have failed-and no question under section 9(8) could have arisen. Since, however, your Lordships are satisfied that a substantial part of 479A was copied by the defendants to produce the three-dimensional Swish drawer, section 9(8) must be considered. It is indeed a curious subsection.

40 I find it impossible to discover any sensible reason why, in circumstances such as these, defendants who copy a plaintiffs' two-dimensional drawings (in which the plaintiff owns the copyright) and constructs a three-dimensional drawer from it and thereby infringes that copyright, should be taken not to have done so merely because persons who are not experts in "knock-down" drawers would fail to

45 recognise that the plaintiffs' copyright had been infringed. If and when the law of

636

Lord Sahnon L. B. (plastics) Limited v. Swish Products Limited [1979] R.P.C.

copyright is again considered by Parliament, it may think that a long, cold look should be taken at this strange subsection. This cannot, however, affect the instant case for the statute must be applied as it now stands.

The onus of establishing a defence under section 9(8) is obviously on the defendants. They have conspicuously failed to discharge that onus; nor did they 5 plead it as they should have done. Whitford, J., however, allowed the point to be taken as its absence from the pleading did not appear to embarrass counsel for the plaintiffs who no doubt thought, rightly, that the point was unarguable. It raises solely a question of fact. I express no opinion as to whether evidence should have been adduced. Normally it should be when questions of fact are in issue. However. 10 if evidence is to be called. it conjures up rather a bizarre picture of witnesses being called on one side and the other who state that they have no experience or know-ledge of the subject in question nor possibly of working drawings, and then go on to state whether it does or does not appear to them that the three-dimensional object was reproduced from the two-dimensional drawing. It would be well-nigh impossible 15 to assess the value of such evidence. For my part, I am a prototype of a non-expert in "knock-down" drawers and, for that matter, in working drawings. I do not think, however, that if I had examined the Swish drawer and the 479A drawings which must include, as Whitford, J. points out, everything written upon it, I should have had any real difficulty in coming to the clear conclusion that the drawers had been 20 reproduced from the drawing or a substantial part of it.

I cannot accept the Court of Appeal's approach to section 9(8) which appears to be based on their conclusion that the Swish drawer was not copied from any sub-stantial part of the 479A drawing-for on this basis no question could arise under section 9(8). 2S

My Lords, for these reasons I would allow the appeal.

Lord Fraser of Tullybelton.-I have had the advantage of reading in draft the speeches prepared by my noble and learned friends Lord WiIberforce and Lord HaiIsham of St. Marylebone. I agree with them and for the reasons given by them, I would allow this appeal. 30

Lord Keith of Kinkel.-I have had the advantage of reading in draft the speech prepared by my noble and learned friend Lord WiIberforce. I am in entire agree-ment with it and cannot usefully add anything. Accordingly I too would allow the appeal.

END OF VOLUME

Printed in Scotland by Her Majesty's Stationery Office at HMSO Press, Edinburgh Dd 561267 K15 12/79 (16868)

D.O. 35 G.W.H.