England and Wales Court of Appeal (Civil Division) Decisions

IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
(Mr. Justice Walton)

		Royal Courts of Justice
		4th November 1985

(Revised)

1. LORD JUSTICE ACKNER: This is the judgment of the court.
2. Madame Merlet, the first plaintiff, was born and brought up in Scotland. She is married to a Frenchman who lives in Paris. She is a clothes designer and has for many years been particularly interested in children's clothing. The second plaintiff is a UK company which manufactures and sells clothes to her design in this country. They are jointly the appellants in this appeal. The respondent to the appeal, the defendant in the action, is a very substantial retailer of products for babies and young children. The plaintiffs sue the defendant for infringement of copyright, the product in issue being a baby cape called a "Raincosy". This garment is essentially a cape with a hood, adapted to the size of the baby. It contains drawstrings round the edges of the cape which enables the edges of the body of the cape to be drawn tighter, thus providing a cocoon-shape. The hood itself, which is designed in the well known "T" shape, is elasticated at its base. At the point where the hood joins the body there are strings situated for attachment to the Kangourou Baby Sling, a carrier for babies designed some years ago by Madame Merlet and sold under the trade name of "Kangourou". This basically straps the baby to its mother. There is a further pair of cords, roughly half way along the depth of the cape, for the same purpose.
3. There is no dispute that the defendant obtained a production model of a "Raincosy", exhibit P16, and instructed its sempstress, a Mrs. Holmes, to "sample and cost the garment". In simple terms, what she did, so far as "sampling" is concerned, was to run her eye and her tape measure over the garment, unpicking only a small piece in the back of the neck to inspect the neck seam. In due course by the use of these measurements the defendant produced its product which it called a "Garry Cape", an example of which is Pll. Before the trial, the parties agreed a synopsis of relevant comparative dimensions, and for all practical purposes there are no significant differences.
4. Originally two alleged "artistic works" were relied upon by the plaintiffs:

(a) a prototype garment (P1) which they alleged was a "work of artistic craftsmanship" within s.3(l) (c) of the Copyright Act 1956, and

(b) two drawings of the two constituent parts of the "Raincosy", being exhibits P2 and P7 which they alleged were original "artistic works" within s.3(1)(a) of the Act.

5. In his judgment given on 13th April 1984, Mr. Justice Walton found against the plaintiffs in relation to infringement of both of the alleged sources of copyright material. The plaintiffs in this appeal have accepted the correctness of the learned judge's decision that the garment is not a "work of artistic craftsmanship" and that their claim for breach of copyright cannot be based upon the prototype garment P1.
6. The circumstances in which the "Raincosy" came to be designed by Madame Merlet and subsequently manufactured in this country can be stated quite shortly. In 1980, before leaving France for a visit to Scotland, she cut and made the garment, fitting it on her small son, so that he would be protected from the rain and the wind she expected there to encounter. She used no drawings at that stage. The end result of her work was the prototype P1, produced in June 1980. Before going to Scotland in August she decided that since up to that stage she had only worked with fabric, she ought to have on paper some details or how it was made in case it was subsequently decided to manufacture and sell it alongside her baby-carrier, the "Kangourou". This is how P2 came into existence at the beginning of July. P2 consists simply of three equal rectangles, each marked as being 49 cm x 25 cm, with cut-away portions 4cm x 7cm in the middle of one side of each, and immediately beneath two equal rectangles each originally marked as 73.5cm x 75cm, later altered to 73.5cm x 80cm. The diagram also shows where the strings are to be attached. There are directions in writing stating that the dimensions given are equally applicable to the weatherproof nylon outside the cape and the woollen interior lining, and the length of the cord. The three equal rectangles are marked "Capuche" and the two larger equal rectangles immediately below are marked "Corps"; the bottom corners of those two rectangles are shown as curved. At a later stage the length of elastic required was stated in the drawing, as was also a reference to a washing and brand label, all in the French language. Madame Merlet was asked by her counsel, "What sort of drawing is this in fact? It is obviously not of one cape?" The answer was, "No. This is the best way to get maximum use from the fabric or minimum loss, that is all. " It was in fact a cutting plan for both fabrics.
7. Before going to Scotland, Madame Merlet took the prototype P1 and the drawing P2 and showed them to her chief seamstress in Paris. She made three prototype garments.
8. Madame Merlet then went to Scotland in August. Before going, she made a copy of P2, translated the French terms into English and entitled the document "Jilly Mac cutting plan". At the foot of the page she wrote, "See detail of hood on page 2". While she was in Scotland she went, on 13th August, to the Ladybird factory in Coatbridge near Glasgow where the "Kangourou" baby-carriers were made. There she saw Mr. Arthur, the Production Manager. Madame Merlet had with her P1, the prototype, and P3, the English version of the cutting plan. These she left with Mr. Arthur to enable him to produce the production model (P16) of the "Raincosy", which became available in the shops at the end of the year. Madame Merlet in her evidence did not refer to providing Mr. Arthur with P7 which is a drawing of the detail of the hood. This is an enlarged drawing of the hood panel. It consists of a rectangle 49 cm x 25 cm, with the cut-away portion 4 cm x 7 cm shown in the same position as in P2. It also contains certain lettering, two asterisks, one in the centre of the cutaway portion and the other immediately below at the very bottom of the drawing. There is a further reference to the short sides of the rectangle being the neck side. We do not know whether Mr. Arthur was also provided with a copy of this document, when Madame Merlet saw him in August. However, Mr. Arthur's unchallenged evidence was that copies of the English versions of P2 and P7 (the latter bearing the date 5.9.80 and marked "2" in the top left-hand corner), were sent to him, together with a sewing plan, by Madame Merlet under cover of a letter of 5th September 19 80 and that he used P7 in the manufacture. Madame Merlet could not remember when exactly she made the drawing, but it was intended to assist Mr. Arthur in the manufacture of the production model (P16). P2 was pleaded in the statement of claim as having been made in or about June (the evidence was at the very beginning of July) and P7 in or about September. They clearly were not made contemporaneously. The copy of the English version P2 which had been sent to him did not show the measurements of the cut-out part of the hood; Mr. Arthur said he had to refer to P7 for these measurements. Mr. Arthur also expressly confirmed in his evidence that they cut the cloth according to the cutting plan P2 . At an early stage in his judgment when recounting the history, the learned judge, rightly in our view, made the positive finding that the Ladybird company manufactured the "Raincosy" to Madame Merlet's specifications, and utilised her cut-out plan for cutting out the two species of cloth. However, towards the end of his judgment, having dealt at length with the claim based upon the prototype garment P1, while confirming that P2 or its equivalent in an English translation was undoubtedly taken with the prototype to the Ladybird factory in Scotland, he said:

"The part which it played in the creation of the garments actually manufactured by Ladybird is obscure in the extreme. I shall, however, without finally deciding the point, assume in the plaintiffs ' favour that it does stand in the chain of causation."

9. It appears that the learned judge must have overlooked his earlier finding which was fully justified on the evidence.
10. It is not disputed that any copyright which might subsist in the drawings P2 and P7 is the property of Madame Merlet. The second plaintiff is her licensee. We do not think it can be seriously disputed that copyright does exist in both those drawings. Section 2(1) of the Copyright Act 1956 provides that:

"Copyright shall subsist, subject to the provisions of this Act in every original literary, dramatic or musical work which is unpublished ......".

11. By section 3(2) copyright also subsists, subject to the provisions of the Act, "in every original artistic work which is unpublished ......". By section 3 (1) the expression "artistic work" includes "drawings irrespective of artistic quality".
12. By section 48(1) the word "drawing" includes "any diagram, map, chart or plan".
13. As regards "originality" we adopt the observations of
14. Mr. Justice Megarry (as he then was) in British Northrop Ltd.v. Texteam Blackburn Ltd. & Anr. [1974] RPC 57 at page 68:

"Copyright is concerned not with any originality of ideas but with their form of expression, and it is in that expression that the originality is requisite. That expression need not be original or novel in form, but it must originate with the author and not be copied from another work: see University of London Press Ltd. v. University Tutorial Press Ltd. [1916] 2 Chancery 601 at 608. A drawing which is simply traced from another drawing is not an original artistic work: a drawing which is made without any copying from anything originates with the artist. The Act merely provides, by Section 48(1), that "drawing includes any diagram, map, chart or plan", and so prima facie, if there is anything which can fairly be called a diagram, it is a drawing and may be the subject of copyright. It may indeed be that some thing may be drawn which cannot fairly be called a diagram or a drawing of any kind: a single straight line drawn with the aid of a ruler would not seem to me to be a very promising subject for copyright. But apart from cases of such barren and naked simplicity as that, I should be slow to exclude drawings from copyright on the mere score of simplicity. I do not think that the mere fact that a drawing is of an elementary and commonplace article makes it too simple to be the subject of copyright."

15. In making the drawings P2 and P7, Madame Merlet was using independent skill as a designer of garments and, in our judgment, both drawings are "original" artistic works within the meaning of the Act. The learned judge was so satisfied in regard to P2, although he expressed some doubt with regard to P7, describing it as "merely a blown-up version of part of P2". In view of the additional information to be found on P7, we do not think it lacks originality in itself. The learned judge, however, concluded that nothing turned upon P7. We shall return to this point later. We are satisfied that copyright subsisted in both drawings.
16. Having reached the above conclusion, two questions remain:

1. Was the copyright infringed?; and if so,

2. Does Section 9(8) apply, and if so, has the defendant made good that defence?

Infringement

17. By section 1(1) of the Act, copyright means the exclusive right to do certain acts. One of those acts is reproduction of the work in any material form (sections 2(5} and 3(5) ) . "Reproduction" is defined by section 48(1) in the case of an artistic work as including "a version produced by converting the work into a three dimensional form".
18. Section 49(1) provides, inter alia, that any reference to a reproduction or copy of a work shall be taken to include a reference to a reproduction or copy of a substantial part of the work. It cannot be disputed that the defendant copied Madame Merlet's "Raincosy". It did not, however, use her cutting plan; it had a different cutting plan (Dl). It is, therefore, no part of the plaintiffs' case that in making Dl there was any infringement of their copyright. With the measurements which the defendant had obtained through the use made by Mrs. Holmes of the plaintiffs' "Raincosy" referred to above, and with the aid of a computer, it created its own quite different cutting plan. However, copyright in a drawing is capable of being infringed by a person who copies an article which is itself a reproduction of the drawing, even though he has not seen the drawing. What the plaintiffs have to establish is that P2 and/or P7 were used to some extent in the production of the production model "Raincosy" (P16) which, as we know was ultimately copied by the defendant. We have already referred to the evidence on this subject and to the learned judge's initial finding, and are accordingly satisfied that they have surmounted this hurdle.
19. Next we have to consider what part of P2 and P7 was embodied in the plaintiffs' production model P16 which the defendants copied to produce Pll. As regards P2, it was the shape and size of the two constituent panels and the position on the body where the tape was to be attached. P16, of course, owed nothing to the layout on P2 of the three hoods and the two body pieces, since this layout merely indicated what was thought to be the most economical way of cutting out the panels from a bolt of cloth.
20. As regards P7, it was clear from the evidence of Mr. Arthur that the only use of P7 he made was to derive the measurements of the cut-out portion, which were 7 cm x 4 cm, and were apparently not marked on the English version of P2 which was sent to him.
21. Mr. Jacob, on behalf of the defendant, submits that there was not embodied in the plaintiffs' P16 a substantial part of either P2 or P7, and accordingly when the defendant copied P16 it did not copy a substantial part of P2 or P7, and accordingly did not infringe the copyright in either P2 or P7.
22. So far as P7 is concerned we accept this submission, having regard to the very limited use made of that drawing.
23. The position in regard to P2 requires, however, more detailed consideration. Mr. Jacob relies strongly on the observations of Lord Pearce in his speech in Ladbrooke (Football) Ltd. v. William Hill (Football) Ltd. [19 64] 1 WLR 273, 293 where he said:

"Whether a part is substantial must be decided by its quality rather than by its quantity. The reproduction of a part which by itself has no originality will not normally be a substantial part of the copyright and therefore will not be protected. For that which would not attract copyright except by reason of its collocation will, when robbed of that collocation, not be a substantial part of the copyright and therefore the Courts will not hold its reproduction to be an infringement. It is this, I think, which is meant by one or two judicial observations that 'there is no copyright' in some unoriginal part of a whole that is copyright. They afford no justification, in our view, for holding that one starts the inquiry as to whether copyright exists by dissecting the compilation into component parts instead of starting it by regarding the compilation as a whole and seeing whether the whole has copyright. It is when one is debating whether the part reproduced is substantial that one considers the pirated portion on its own."

24. Mr. Jacob submits that the originality in P2 resides solely in the manner in which the three hoods and the two bodies are positioned on the plan, since this was the true intent and purpose of the plan, namely to give a pictorial direction as to the most economical way of cutting out the panels from a bolt of cloth. He submits that there is no originality in the recording of the shape and dimensions of these panels, in other words not enough skill and labour has been expended on the production of that part of the drawing to give rise to copyright; the essential individuality of P2 resides wholly in the cutting scheme.
25. We cannot agree. P2 involves a free-hand drawing, which translates into two components, the hood and the body, with the shape and size of these constituent parts of P1 being the prototype of the completed article. We take the view, this being essentially a question of degree, that a sufficiency of skill and labour was expended on the drawings of these panels, omitting altogether their layout on P2, to give them sufficient originality so that by reproducing or copying their shape and dimensions there has been a substantial reproduction or copying of P2. We are therefore of the opinion that, subject to any possible defence based on s.9(8) of the Act, the defendants have infringed the plaintiffs' copyright in P2.
26. We now deal with the final question. Does section 9(8) of the Act apply, and if so, has the defendant made good that defence?
27. Section 9(8) of the Act provides:

"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."

28. The purpose of this section is to provide that reproduction by conversion from a two dimensional to a three dimensional form, which is what happened here, should only amount to infringement where the object looks like the drawing, that is to say, where the object can be recognised by the non-expert as being a reproduction of the drawing. It is for the judge, placing himself in the position of a non-expert in relation to this child's garment, to decide whether the defendant's product, Pll, appears to be a reproduction of P2. For this purpose he must be entitled to compare the object with the drawing and to take into account any written matter on the drawing: see L.B. (Plastics) Ltd. v. Swish Products Ltd. [1979] 1 RPC 551 and in particular the judgment of Mr. Justice Whitford at 573/4 and the speech of Lord Wilberforce at 622. In regard to P2, Mr. Jacob contends that the non-expert would see a drawing of five panels and take the view that this related to some intermediate stage in the production of the garment and that the garment which was in front of him was not a reproduction of this drawing.
29. The non-expert would of course realise, because P2 is so entitled, that this is a cutting plan. He would, however, also appreciate that the article consisted of only two components, a hood and a body. As regards the body he would appreciate that it had rounded corners and was to have attached to it a tape which, in conjunction with the rounded corners, would certainly be capable of drawing the material together so that it did not hang freely. He might perhaps therefore regard this part of the garment in front of him as a reproduction of part of the drawing. However, s.9(8), in our judgment, requires one to look at the whole object, not merely part of it. What of the hood? Could the non-expert recognise this as being a reproduction of the drawing? We are clearly of the opinion that P2 on its own would not enable him so to do. The question, however, arises as to whether the note at the foot of P3, the English version of P2, "See detail of hood on page 2", entitles one to look at P7, which is marked "2". Mr. Jacob concedes that if P2, the very subject matter of the claim for copyright, had been so marked, then it could well be argued that P2 and P7 constituted one and the same drawing. But P2 was not so marked, and P3, which is but a copy of P2, is not an original work and cannot therefore, be the subject matter of a claim for copyright. It is argued on behalf of the plaintiffs that the notional unskilled observer is entitled to interpret P2 in the light of the contemporary associated drawings: see Solar Thomson Engineering Co. Ltd. v. Barton [1977] RFC 537 per Lord Justice Buckley at 559. But, in our judgment, P7 is not a contemporary drawing. It was always the plaintiffs' case that it came into existence after P2. As to it being associated with P2, that drawing contains no reference, either express or implied, to any other drawing. To allow the nonexpert to have regard to P7 is wrongly to admit extrinsic evidence in the form of a subsequent explanation of the copyright work. Mr. Englehart, on behalf of the plaintiffs, has urged that P2 should not be looked upon as a complete work of copyright when it was made early in July, because of the subsequent alterations referred to above. But it is not suggested that these alterations created a new copyright. They were not of sufficient importance or significance.
30. With some regret, we conclude that we are not entitled when carrying out the exercise necessitated by s.9(8) of the Act to have regard to P7 and the detail it provides. We must confine our attention to P2 and this did not supply sufficient information to pass the lay recognition test. Accordingly, the defendants are entitled to set up the statutory defence and we must therefore dismiss this appeal
31. MR. DAVIES: I would ask your Lordships to dismiss the appeal with costs and that the money which has been paid into court by way of security by the appellant/plaintiff should be paid out in accordance with the Taxing Master's certificate when the costs have been taxed.
32. LORD JUSTICE ACKNER: Can you resist that?
33. MR. MORRITT: My Lord, I cannot resist that.
34. My Lords, I am instructed to ask your Lordships for leave to appeal. I have only had a relatively short time to read the judgment and to assimilate it. The point or. page 21, where your Lordships say: "However, s.9(8), in our judgment, requires one to look at the whole object, not merely part of it"; that, I do not myself remember arguing. I have asked my learned junior; he does not particularly remember it either. My Lord, there is a point we would like to take further if your Lordships were to give us leave.
35. LORD JUSTICE ACKNER: No, we think not, Mr. Marriott.
36. MR. DAVIES: My Lord, might I just mention one matter, in case this matter should go further. In the course of preparing to receive the judgment here, I notice an error - it is clearly a clerical error - in the judgment below and we wondered whether we should apply at this stage? I think it is by consent.
37. LORD JUSTICE ACKNER: If it is a clerical error, you do not want leave of the court about it. If the matter goes further, then the transcript no doubt can be amended.
38. LORD JUSTICE O'CONNOR: If you both agree, what does it matter?
39. MR. DAVIES: If your Lordship pleases.

Appeal dismissed with costs Application by appellants for leave to appeal refused.