England and Wales Court of Appeal (Civil Division) Decisions

Neutral Citation Number: [2001] EWCA Civ 532 Case No: A3/2000/0004 + A3/2000/6447 CHANF

IN THE SUPREME COURT OF JUDICATURE

COURT OF APPEAL ( CIVIL DIVISION)

ON APPEAL FROM MR NICHOLAS UNDERHILL QC

(SITTING AS A DEPUTY HIGH COURT JUDGE)

Royal Courts of Justice

Strand, London, WC2A 2LL

Wednesday 11th, April 2001

LORD JUSTICE MUMMERY :

1. This is an appeal from the order of Mr Nicholas Underhill QC, sitting as a deputy High Court Judge of the Chancery Division. On 5 November 1999 he dismissed an action for infringement of unregistered design right, holding that the design in question was "commonplace" in its design field at the time of its creation and not entitled to protection. He gave permission to appeal to the Court of Appeal.

The Facts

2. Mr Malcolm Scholes is the founder and owner of the claimant company, Scholes Windows Limited (Scholes). It carries on the business of designing and manufacturing windows. Since the 1980's Scholes has used a material now called U-PVC (unplasticised polyvinylchloride). The defendant company, Magnet Limited (Magnet), also manufactures windows using U-PVC.

3. Scholes claims to be entitled to the unregistered design right in an integral feature of the top opening casement window marketed by it under the name Nostalgia. The frame is made of U-PVC, but it is given a period feel by the addition of the disputed feature. The feature is a decoratively shaped horn extension of the kind used at the end of the stile on the upper light of timber frame Victorian sash windows.

4. The design of the Nostalgia horn was outlined in sketches made from the beginning of 1992 onwards by Mr Scholes in his working notebooks. In 1993 he made a rough model. Under the direction and supervision of Mr Scholes the sketches were worked on by Mr Ray Smith, a draftsman in the employment of Scholes. The design was developed in its final shallow lazy S shape by another employed draftsman, Mr Gray, in a worked up drawing number D1910/1 dated 20 July 1994. The judge found that Scholes was the first owner of any design right in the design, it having been created by its employees in the course of their employment.

5. The design in the drawing constitutes the contour of the bottom and inner edge of the horn. It is described in detail by the deputy judge and analysed by him into its five components. He concluded that the characteristic part of its shape could be described as "a lazy S shape", though consisting of three curves rather than two.

6. The Nostalgia window attracted a lot of favourable attention when it was exhibited at the 1995 Glassex Exhibition in March 1995.

7. The link between the Nostalgia window and the Magnet window occurred in this way. In April 1996 one of the site managers of Magnet's factory at Flint, Mr Wolstenholme, took photographs of a Nostalgia window when he saw it in the offices of a customer, who had asked him if Magnet could supply a similar mock sash effect window. Mr Wolstenholme gave the photo to Magnet's site engineering manager, Mr Asher, to show him the kind of window that Magnet might make. He asked Mr Asher to design a window horn similar to the one in the photo. The deputy judge found that Mr Asher copied the Nostalgia horn design shown in the photo "so as to produce an article substantially to that design."

8. In 1996 Magnet began to market a PVC mock sash window with decorative horns very similar to the shape of those on the Nostalgia window. Scholes started proceedings claiming that Magnet had infringed its design right in the Nostalgia window horn.

The Statutory Provisions

9. Section 213 (in Part III) of the Copyright, Designs and Patents Act 1988 (the 1988 Act) provides:-

" (1) Design right is a property right which subsists in accordance with this Part in an original design.

(2) In this Part "design" means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article.

(3) Design right does not subsist in -

(a) a method or principle of construction,

(b) features of shape or configuration of an article which-

(i) enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function,or

(ii) are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part,or

(c) surface decoration.

(4) A design is not "original" for the purposes of this Part if it is commonplace in the design field in question at the time of its creation.

(5) Design right subsists in a design only if the design qualifies for design right protection by reference to-

(a) the designer or the person by whom the design was commissioned or the designer employed (see sections 218 and 219),or

(b) the person by whom and country in which articles made to the design were first marketed (see section 220),

or in accordance with any Order under section 221(power to make further provision with respect to qualification).

(6) Design right does not subsist unless and until the design has been recorded in a design document or an article has been made to the design.

(7) Design right does not subsist in a design which was so recorded,or to which an article was made, before the commencement of this Part."

10. This appeal turns on the proper interpretation and application of subsection (4) to the facts found by the deputy judge.

The Judgment

11. The deputy judge held in Scholes's favour that (a) the design was "original" in the copyright sense; (b) it was the owner of any design right in it; and (c) Magnet had substantially copied it. But he dismissed the action. Scholes failed on the ground that the design was "commonplace in the design field in question at the time of its creation" within the meaning of section 213 (4) of the 1988 Act. The consequence was that the design was not "original" for the purposes of Part III of the 1988 Act and design right did not subsist in it.

12. In explaining his conclusion that the Nostalgia design was commonplace in the statutory sense the deputy judge said:-

" ....shallow S-shaped horn designs were common in the built environment in 1994. They are to be seen by anyone with eyes to see in any typical assemblage of Victorian buildings in any street or residential area. They were designed a century or more ago but they are still current in the sense that they are there to be seen and to inform the eye of designers or of anyone else interested in what horns can look like.

I believe that designs of this sort do fall to be taken into account in addressing the question of commonplaceness.To take an example of a form of design that may be more commonly identified, if egg-and-dart or Greek key motifs,which can be seen on countless eighteenth-century interiors, had been wholly out of fashion in new buildings until now, I cannot believe that any designer who created a design based closely on them (though not slavishly copied) could defend an allegation of commonplaceness simply because the designs themselves were old."

13. The deputy judge then turned to the question whether the differences between the Nostalgia horn design and the very many other broadly similar designs for window horns were sufficiently great to lift it out of the ordinary run of such designs. He held that they were not.

14. The evidence showed that there were many examples of window horns with shapes closely similar to the Nostalgia design. Photographs and sketches of genuine sash windows were produced from the Brooking Collection of period architectural features kept at the University of Greenwich. There were also in evidence photos of miscellaneous Victorian horns photographed in situ.

15. Having described Mr Scholes as a perfectionist, who had taken great care about the design of this horn, the deputy judge commented-

" I do not believe that the additional degree of elegance which he may well have achieved by his perfectionism would be of any real significance in the market to which the window was aimed, whether that is viewed as a market of individual home buyers or replacement window purchasers or the arguably more sophisticated market of developers and architects.

There was evidence that the Nostalgia window in general, and the integral horn feature in particular, attracted favourable attention when they were first exhibited; but there was no evidence, and it seems to me inherently unlikely, that that attention owed anything to an appreciation of the precise shape of the horn. To put it another way, I do not believe that its appeal to the market would have been in any significant way different if Mr Scholes had copied directly from, say, the Brooking collection a horn of broadly similar appearance to that which he in fact designed."

16. The deputy judge added the general observation that

"Where, as must be the case in a number of fields, design history supplies a huge resource of typical designs (such as, in the architectural field, mouldings or cornices)--most of which are freely available for copying--- it would, it seems to me, lead to real practical difficulties if the creator of a modern pastiche, only slightly different from the rest of the available bank of designs, could obtain protection in relation to it. It would often be difficult to know whether the producer of the alleged copy had copied from a genuine original or from the claimant's pastiche, nor indeed might the copier himself always be in a position to know."

Submissions of Scholes in Outline

17. It is contended by Mr Silverleaf QC, on behalf of Scholes, that the deputy judge ought to have held that the design of the Nostalgia window horn was not commonplace in the design field in question at the time of its creation.

18. He had wrongly directed himself on the identity of the design field in question at the date of the creation of the design. That date was July 1994. He ought to have held that the design field in question as at that date was U-PVC casement windows or casement windows generally. Instead, he wrongly held that the design field was that of window design generally, including traditional timber frame sash windows.

19. This error led him to treat, as forming part of the design field, designs of decorative window horns consisting of examples (drawn from the Brooking Collection at the University of Greenwich) of wooden sash windows between 1840 and 1910 ; and designs in numerous Victorian buildings which were said to be readily available for use by designers of windows, but as to which there was no evidence.

20. The deputy judge also wrongly held that the selected decorative horns in the Brooking Collection retained their characteristic shape when removed from the sash rebates, in which they were located and partially obscured when they were fitted. In fact their appearance when removed is substantially different from their appearance in situ. The horns in the Brooking Collection were substantially different in appearance in situ from the design of the Nostalgia window horn.

The Legal Position

21. The Appellate Role

22. The recent decision of the House of Lords in Designers Guild Ltd v. Russell Williams (Textiles) Ltd [2001] FSR 113 is a timely reminder of the function of the Court of Appeal on issues of fact or mixed law and fact in copyright cases. The relevant issue in that case was one of substantiality in a case of artistic copyright in a fabric design. The Court of Appeal were held by Lord Bingham of Cornhill, in a speech with which all the other members of the Appellate Committee agreed, to have approached this issue

".... more in the manner of a first instance court making original findings of fact than as an appellate court reviewing findings already made and in very important respects not challenged. It was not for the Court of Appeal to embark on the issue of substantiality afresh, unless the judge had misdirected himself....." (p.117)

23. Lord Hoffmann discussed this point in greater detail in his speech at p.122 where he said-

" The question of substantiality is one of mixed law and fact in the sense that it requires the judge to apply a legal standard to the facts as found. It is, as I said, one of impression in that it requires the overall evaluation of the significance of what may be a number of copied features in the plaintiff's design. I think, with respect, that the Court of Appeal oversimplified the matter when they said that they were in as good a position to decide the question as the judge."

24. Lord Hoffmann went on to identify two reasons why the trial judge was in a better position then the Court of Appeal to decide the issue of substantiality: first, although the question did not depend on an assessment of the credibility of witnesses, the judge was assisted by the expert evidence and was better placed than an appellate court to assess certain elements of the features relied on to produce particular visual effects; and, secondly, "...because the decision involves the application of a not altogether precise legal standard to a combination of features of varying importance...this falls within the class of case in which an appellate court should not reverse a judge's decision unless he has erred in principle..."

25. See also Lord Scott of Foscote at p.135.

26. The same approach is appropriate on an appeal from a trial judge's decision on the issue whether a design is commonplace in the field of design in question at the time of creation under section 213 (4). As in the case of copying and substantiality, the trial judge decides the commonplace issue with the assistance of expert witnesses; he makes findings of fact by a process of comparing various works, by making an overall evaluation of similarities and differences between them and by applying a rather imprecise legal standard of the "commonplace" to combinations of features.

27. On this appeal the issues are therefore whether the deputy judge misdirected himself or erred in principle on two particular aspects of the commonplace issue: the identity of "the design field in question" and the legal effect of the expression "at the time of creation."

The Commonplace Point : General

28. In my judgment, the deputy judge started correctly by first comparing the Nostalgia design with the Magnet design and with other designs to decide whether the Nostalgia design was "original" in the copyright sense. He was entitled to conclude, in the light of all the evidence about the genesis of the Nostalgia design, that it had not simply been copied from an earlier design and that it was "original" in the copyright sense. This conclusion was initially challenged in the Respondent's Notice, but it was not pursued at the hearing of the appeal.

29. The next stage was to determine whether the Nostalgia design lost its originality under section 213(4) by reason of being a "commonplace" design. In embarking on this issue the deputy judge correctly appreciated that it would be necessary to compare the Nostalgia design with other designs. The critical question is: with what other designs?

30. It is at this point that the approach of the judge is criticised by Scholes as amounting to a misdirection in principle as to the designs with which it was appropriate to make comparisons. It is contended that section 213(4) requires the comparison to be restricted in two important respects. First, comparison is limited to designs in the same "design field" as the Nostalgia design. It is submitted that this means the design of U-PVC casement windows. Secondly, comparison is limited to designs "in use" at the time of creation of the Nostalgia design. It is submitted that the relevant time is July 1994, so that comparison with the designs of horns on timber sash windows is excluded altogether.

31. The judge did not limit his comparisons of the designs in these two respects. It is submitted that he reached his conclusion on the commonplace point by making impermissible comparisons of the design of the U-PVC Nostalgia horn made in 1994 with designs of horns made in wood, which were no longer being designed or used in 1994. The design field from which comparisons were drawn by the deputy judge was, it is said, too wide. It included designs of horns which were not made of U-PVC, and which had a different nature and purpose. It included "historical" designs of horns which were not in use in 1994.

The Design Field Point

32. The expression "design field in question" is not legally defined in the 1988 Act. It must accordingly be understood in its ordinary and natural meaning, bearing in mind that the purpose of the provision in subsection (4) is to withhold legal protection from commonplace designs. The expression is obviously intended to set sensible limits to the inquiry whether a design is "commonplace." The making of comparisons with other designs is the essence of that inquiry. The outer bounds of the limits on comparisons with pre-existing designs are matters of fact and degree to be assessed by the tribunal of fact in taking account of all the relevant circumstances of the particular case.

33. Magnet contended that the design field in question is window design simpliciter, regardless of the materials used or the nature and purpose of the design. The initial position of Scholes at the trial was that the design field in question was PVC window design and that the designer is presented with different design problems according to the materials used-wood , steel, aluminium or PVC. By the close of the trial, however, it was the judge's understanding that it had been conceded that the design field extended to mock sash windows in any material, including timber as well as PVC.

34. The deputy judge accordingly posed the relevant question as follows

" ....was the design of the Nostalgia horn commonplace in the field of window design in July 1994?"

35. He held that it was. His conclusion was based on a comparison with the design of window horns in the built environment, using as comparators horns on sash windows made of wood.

36. It was submitted on behalf of Scholes that this approach involved a misdirection or an error of principle. It ignored the fact that there are two primary considerations in ascertaining what is meant by the term "the design field in question." They are-

i) the nature and purpose of the article; and

ii) the material structure of the article.

37. Mr Silverleaf explained that each of these factors provides driving forces on the designer directing him towards or away from particular design features. The driving forces and the design constraints change when the designer steps outside the limits of the particular kind of article to be manufactured or the particular material used. Each material used for the manufacture of an article has its own characteristics leading to technical differences in the design of the article and that affects the scope of the design field in question. The design field in question was therefore narrower than windows simpliciter: it was limited to U-PVC casement windows, or to casement windows ,or simply to U-PVC windows.

38. In my judgment, there was no misdirection or error of principle in the approach of the deputy judge to the "design field in question." It is necessary to examine the submissions of Scholes by reference to the statutory language and by relating it to a correct appreciation of the concept of a design. The definition of "design" in subsection (2) covers any aspect of the shape or configuration of the whole or part of an article. The definition of design does not incorporate, either expressly or by implication, the nature or purpose of the article itself or the material structure of the article.

39. The submissions advanced on behalf of Scholes confuse the design of the aspect of the shape or configuration of the window horn with (a) the nature of the particular article to which the design is applied and (b) the idea of using horns as a decorative feature on top opening windows with frames made of U-PVC. The property right is in the design of any aspect of the shape or configuration of the horn. It is not a right in the article itself. It is not a right in the idea of a particular construction, use or application of the article itself. Thus the fact that part of the article is made out of U-PVC does not make that material a part of the design of an aspect of the shape or configuration of the Nostalgia horn. The fact that the purpose of the article is to decorate a mock sash casement window, rather than the genuine article, does not make that a design of an aspect of the shape or configuration of the Nostalgia horn. As those matters are not part of the design they are irrelevant to the delineation of the "design field in question."

The Time of Creation Point.

40. The deputy judge included in his comparison with the Nostalgia horn the designs of horns that were "old" in the sense that they were first produced many years before 1994, though were current at the time of creation of the Nostalgia design in the sense that they were still there to be seen on windows in houses and to inform the eye of designers or anyone else who was interested.

41. It was submitted on behalf of Scholes that this approach involved a misdirection or error of principle regarding the temporal scope of the design field in question. The approach of the deputy judge involved making comparisons with "historical designs" of horns on sash windows which can be seen in the world around us. Although the designs of those articles existed and were available, they had completely fallen into disuse since about 1915. The design of wooden window horns had become a defunct art long before 1994

42. It was also submitted that the decorative horns on sash windows were located in the sash rebates when they were fitted to sash window frames and that their appearance when removed is substantially different from their appearance in situ. If there was to be any comparison with them at all, it should be as seen in situ and not as removed and available in the Brooking Collection.

43. Those designs, it is said, should have been disregarded in reaching a conclusion on the "commonplace" issue. Sash windows had not been used in new buildings since about 1915. They had only been used as replacement windows. The fact that the designs were commonplace in the past did not make them commonplace now. Comparisons should have been confined to designs of horns "in use" (in the sense of "being designed by designers" ) in around 1994 when the design of the Nostalgia horn was created. None of the designs in use and on the market at that time bore any resemblance to the design of the Nostalgia horn.

44. It was also submitted that, even if the design field did extend to historical designs, the evidence of those earlier designs did not establish that the distinctive shallow lazy S shape of the Nostalgia horn with three radii had ever existed previously. It was unique and novel in the true sense. It was distinct from what had been done before in the way of window horn designs. The deputy judge was therefore wrong to conclude that it was commonplace.

45. In my judgment, there is no misdirection or error of principle in the approach of the deputy judge to "old" designs of horns. The statutory question does not depend on when other designs in the design field with which comparison is to be made were first produced or on when they were in use or whether they have fallen into disuse and become "historical designs." The relevant question is "Is the design in which the right is claimed commonplace?" That question is to be determined by having regard to the "design field in question at the time of creation." There is nothing in these provisions which expressly or impliedly excludes from consideration existing designs, which were first produced at an earlier time than the design in suit, if they can be fairly and reasonably regarded as included in the design field in question at the time of the creation of the design in suit. The fact that they could still be seen by designers and interested members of the public as a feature of windows on many houses in July 1994 is a relevant factor in deciding whether or not they were in the design field at the date of creation and were commonplace within the meaning of subsection (4).

The Comparisons.

46. The materials available to the deputy judge (which have been amplified by better quality photographic copies made available to this court by Scholes on the appeal) entitled him to conclude that the aspects of the shape and configuration of the Nostalgia horn design could readily be found in the design field as at July 1994, so that the Nostalgia design could fairly and reasonably described as commonplace at the time of its creation.

47. The deputy judge and this court were shown photographs and sketches of a large number of Victorian window horns taken from genuine sash windows in the Brooking Collection of common period architectural features. The deputy judge was entitled to infer that the selected horns in the collection were typical of those to be "found in situ in numerous Victorian buildings up and down the country" and were accordingly "common in the built environment in 1994."

48. The material illustrated a large number of horns in a shallow S shape designed for use on sash windows at earlier dates than the Nostalgia horn and therefore not copied from it. Many of them are very similar to the design of the shape and configuration of the Nostalgia horn, though distinguishable from it on closer examination of design details. I refer, for example, to the photographs of the horns on pages 174, 180, 223, 233, 236, 260, 261, 263, 264, 265, 266, 267, 268, 270, 271, 272 and 273 of the bundle.

49. The deputy judge made the comparisons by considering the similarities and differences in the designs from the point of view of a person to whom it was ultimately intended that the design should appeal, rather than from the point of view of the expert in the design of window horns. He considered the appeal of the design to "the market to which the window was aimed, whether that is viewed as a market of individual home buyers or replacement window purchasers or the arguably more sophisticated market of developers and architects."

50. In my judgment this was the correct approach. I would reject the submission made on behalf of Scholes that the comparisons should be made from the point of view of the designer who is expert in the design field in question. Expert evidence is admissible to assist the court in the perception and appreciation of the differences and similarities in the designs compared. But it is not necessary to be an expert in the design field in question either to appreciate the similarities and differences between the designs compared or to form an opinion whether the design in which design right is claimed is "commonplace." At the end of the day it is for the court and not for the experts, whether they be parties or witnesses called by the parties, to determine objectively on all the evidence whether the design is commonplace.

Infringement.

51. By a Respondent's Notice Magnet sought to challenge the finding of infringement by the deputy judge. The argument focused on the inadequacy of Mr Wolstenholme's photograph connecting the alleged similarities between the Nostalgia horn and the Magnet horn. It was contended that little of the design of the Nostalgia horn can be discerned from the photograph, which was the only representation of the design available to Magnet when it designed its horn. Mr Watson QC submitted that all that had been derived from the photograph was the idea of the lazy S design of a window horn and that the similarities relied on by Scholes must have been coincidental and not the result of copying of the Nostalgia design.

52. If, as is my opinion, the Nostalgia design is commonplace and is not protected by design right, it is unnecessary to express a concluded view on this question, save to say that, in the light of what has already been cited on the appellate role, I would be reluctant to interfere with the conclusion of the deputy judge that the Magnet horn was substantially to the design of the Nostalgia horn as a result of copying.

Result

I would dismiss this appeal. Finally I would pay tribute to the clarity and care with which the deputy judge prepared his excellent judgment.

LORD JUSTICE RIX - I agree.

LORD JUSTICE PETER GIBSON - I also agree.

ORDER: Appeal dismissed. We think a small discount is appropriate from the award of costs to the successful respondent. We will say that the respondent recovers 90% of the costs of the appeal; and we will make the agreed order as to the interim payment at £20,000, payable by two payments of £10,000 each, the first payment after 28 days. There will be no order on the application for further evidence.