England and Wales Court of Appeal (Civil Division) Decisions

IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE PATENTS COUNTY
COURT (His Honour Judge Fysh QC)

		Royal Courts of Justice Strand, London, WC2A 2LL Wednesday 31 July 2002

Lady Justice Arden :

1. This is an appeal from the order dated 14 December 2002 of His Honour Judge Fysh QC sitting in the Patents County Court insofar as that order declared that the manufacture by the appellant of certain jewellery infringed the respondent's design right in the design referred to as LMC 125 and made consequential orders by way of an injunction, an order for delivery up and an order for an enquiry and costs. There is no cross-appeal from the orders which the judge also made dismissing the respondent's claims for copyright and patent infringement.
2. The appellants and the respondent are jewellery manufacturers. The jewellery in question was a form of pendant which made use of obsolete and imitation coins called "inserts". The inserts are retained in place by lugs within the mount. The lugs could also be formed within a bezel, being a captive ring with lugs placed over the circumference of the insert.
3. LMC 125 is a drawing of a pendant without an insert. LMC 125 was designed by a Mr Ball. The design relied on was the combination of "all the visible features of the bail, the bezel, mounting and decorative edge". The pendant was intended to be worn round the neck on a chain, and the bail was a piece of metal attached to the pendant through which a chain could be threaded. In the design, the area round the insert contains the outline of three hearts into which a bail has been inserted. The central portion of the bail has been cut out in the shape of a heart.
4. The relevant provisions of the Copyright, Designs and Patents Act 1988 are as follows:-

"213 (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) ...

214 (1) In this Part the 'designer', in relation to a design, means the person who creates it ...

215 (1) The designer is the first owner of any design right in a design which is not created in pursuance of a commission or in the course of employment.

(2) Where a design is created in pursuance of a commission, the person commissioning the design is the first owner of any design right in it.

(3) Where, in a case not falling within subsection (2) a design is created by an employee in the course of his employment, his employer is the first owner of any design right in the design ...

226 (1) The owner of design right in a design has the exclusive right to reproduce the design for commercial purposes:

(a) by making articles to that design, or

(b) by making a design document recording the design for the purpose of enabling such articles to be made.

(2) Reproduction of a design by making articles to the design means copying the design so as to produce articles exactly or substantially to that design and references in this Part to making articles to a design shall be construed accordingly ..."

The judgment below

5. I need only summarise the parts of the judgment relevant to this appeal. The judge held that the relevant field for design right purposes was that of coin-mounted jewellery design and manufacture. The design for which protection was sought was the pendant without any mounted disc. The judge held that the mountings of the disc had to be excluded from the scope of the design under the exclusions in section 213 (3)(b)(i) and (ii), known as the "must fit" and "must match" exclusion. There is no cross appeal on this point.
6. In the judge's judgment that left the decorative edge consisting of the three heart motif and the bail, which took the wearer's chain. As to the repeating heart motif, the judge held that this was not original, and was also commonplace. As to the bails, however, the judge held that the bail in this case was Mr Ball's own design. He changed the size and revised its ornamentation as well. The judge found that the whole article was original, and that the combination of the bail and the repeating heart motif could not be said to be commonplace.
7. In reaching his conclusion, the judge rejected the argument that the primary purpose of the bails was functional and that their visual impact was minimal. The judge further held that though the bails may form a subordinate part of the pendants from a functional point of view, this was not the case visually. The judge further held that, in any event, since the issue was one of design right, it was unhelpful to dissect the overall contribution to the design of an article into elements, so as to isolate the functional subordination of a component. Accordingly, the judge held that it was the combination or ensemble of the various components that was original and which enjoyed design rights.
8. The judge was satisfied that the bail, but not the repeating heart motif, had been copied. Accordingly, he had to consider the question whether copying the bail amounted to copying that constituted design right infringement. The judge prefaced his consideration of this question by expressing the belief that the approach of copyright law to the issue of "substantial part" was applicable to the law relating to design right. On that basis, it was appropriate to apply the approach of Lord Hoffmann and Lord Scott in Designers Guild Ltd v Russell Williams Textiles Ltd [2002] 1 WLR 2416. In that case, there was a claim for infringement of copyright and the copying in question was of parts of a design also consisting of a combination of elements, not all of which were the work of the designer who had created the combination. Applying this approach the judge held as follows:-

"119. The first stage in this enquiry is to determine whether the ornamented bail for LMC 125 formed a substantial part of the design for LMC 125. This is obviously a question of impression. LMC 125 notionally construed for design right purposes consists of just two elements: the repeating hearts motif and the bail. Both have functional purposes and both are ornamented. The heart shaped cut out on the bail of LMC 125 imparts to the pendant, as a whole, a distinct visual resonance with its surround. This would be observed by both the purchaser and upon the breast of the wearer. In my judgment, this ornamented bail is a substantial part of the design as a whole.

120 Equally important in assessing whether infringement has occurred is the fact that the ornamented bail which was copied is the only part of the article which was the result of the exercise of independent skill and judgment on the part of the designer, Mr Ball.

121 This is not a case where the complaint is in copying the idea of combining repeating hearts and a bail in a coin pendant. As Lord Hoffmann said in Designers Guild at page 121 – 122):

'At that level of abstraction, the idea, though expressed in the design would not have represented sufficient of the author's skill and labour as to attract copyright protection.

Generally speaking, in cases of artistic copyright, the more abstract and simple the copied idea, the less likely it is to constitute a substantial part. Originality, in the sense of the contribution of the author's skill and labour, tends to lie in the detail with which the basic idea is presented. Copyright law protects foxes better than hedgehogs.

122. In my judgment, the defendants' coin pendant of which complaint is made is an article made substantially to the claimant's design LMC 125 by copying, and this part of the action accordingly succeeds."

9. The judge did not explain the last sentence of his citation from Lord Hoffmann's speech in the Designers Guild case, in which the judge had appeared as leading counsel. Indeed Lord Hoffmann did not elaborate on his reference to hedgehogs and foxes. However, it appears that it is a reference to a fragment of Greek poetry of the seventh century BC, with which the late Sir Isaiah Berlin begins his famous essay on Tolstoy:

"There is a line among the fragments of a Greek poet Archilochus which says 'The fox knows many things, but the hedgehog knows one big thing'." (The Hedgehog and the Fox: An Essay on Tolstoy's View of History by Isaiah Berlin. (1953, as revised in 1978) (Phoenix) (1999) page 3).

10. Sir Isaiah points out that scholars have differed about the correct interpretation of these "dark" words. They may, on the one hand, mean no more than that the fox, for all his cunning, is defeated by the hedgehog's one defence. But the fragment may also be taken figuratively as contrasting those with a single central vision and organising principle as against those who pursue many ends, often unrelated or contradictory. It was, I think, in the figurative sense that Lord Hoffmann was using his metaphor.

Submissions

11. There was no challenge to the judge's findings of fact but rather to the conclusions he drew from those facts. Mr Graham Shipley, for the appellants, accordingly submits that the judge was wrong to conclude on the facts that there was a copying of a substantial part of the respondent's design. Mr Shipley points to the evidence of Mr Stocker, the respondent's expert, who said that the bail was not something to which he would pay attention. Mr Shipley submits that the judge was wrong to reject this evidence. Mr Ball, too, said he "just put a different bail" on a pendant brought to him. Miss Denise McFarland, for the respondent, submits that the court should not interfere with the findings of the trial judge unless he was plainly wrong.
12. Mr Shipley next submits that it was not shown that Mr Ball designed the combination. Miss McFarland points out that the judge accepted Mr Ball as a truthful witness and Mr Ball said in evidence that he had designed the bail for the pendant.
13. In his written argument Mr Shipley submitted that the bail was excluded by the "must fit" exemption in section 213(3)(b)(i) of the Copyrights and Registered Designs Act 1988, but this point was rightly not pursued in oral argument.
14. Mr Shipley submits that the judge should have held that the design was commonplace. He submits that the pendant comprised the combination of the commonplace hearts surround with the bail to which Mr Stocker would not pay attention and which was not proved to be original. Moreover, Mr Ball did not think the design to be "screamingly original". Miss McFarland points out that the onus of proof on these issues was on the appellant. The appellant failed to discharge that onus at trial and the judge was entitled to reach the conclusion which he did.
15. Finally Mr Shipley criticised the judge's adoption of the approach to infringement in copyright. Copyright may be infringed by making a copy of either the whole "or any substantial part" of a copyright work (Copyright, Designs and Patents Act 1988, section 16(3)(a)). As Aldous J pointed out in C & H Engineering v F Klucznik & Sons Ltd [1992] FSR 421, this is a different test from that set out in section 226(2) of the 1988 Act (above) in relation to design right:

"Section 226 appears to require the owner of a design right to establish that copying has taken place before infringement can be proved; that is similar to copyright. However the test of infringement is different. Under section 16 copyright will be infringed if the work, or a substantial part of the work, is copied. Under section 226 there will only be infringement if the design is copied so as to produce articles exactly or substantially to the design. Thus the test for infringement requires the alleged infringing article or articles be compared with the document or article embodying the design. Thereafter the court must decide whether copying took place and, if so, whether the alleged infringing article is made exactly to the design or substantially to that design. Whether or not the alleged infringing article is made substantially to the plaintiff's design must be an objective test to be decided through the eyes of the person to whom the design is directed."

16. On Mr Shipley's submission, the question, therefore, which the judge should have asked was whether the design in which design right was found to exist, that is the bail and repeating heart shaped motif together, had been copied to produce an article substantially to the same design. The judge had asked the wrong question and had thus directed himself to the component parts of the design not its overall effect.
17. Ms McFarland submits that, although the judge drew on the law of copyright infringement, his judgment read as a whole showed that the judge was well aware that the design right related to a combination of features and he must, therefore, have looked at the combined whole. Moreover, although the concept of substantiality has been analysed in the Designers'Guild case for the purposes of copyright, the gloss there put on substantiality did not affect the issues in this case. Ms McFarland stressed the judge's conclusion as to the visual impact of the bail.

Conclusions

18. All Mr Shipley's arguments save the last are, in my judgment, no more than challenges to the judge's findings of fact. I would accept Ms McFarland's submissions that they fail because Mr Shipley cannot show that the findings were against the weight of the evidence. Mr Shipley accepted the judge's premise that the collocation of commonplace integers could give rise to an original design which was not commonplace, citing an analogy with the Eiffel Tower and the decision of Laddie J in Ocular Sciences v Aspect Vision Care Ltd [1997] RPC 289.
19. Mr Shipley's final submission is, however, in my judgment well founded. As Aldous J observed in the passage I have set out in the Klucznik case, there is a difference between an enquiry into whether the item copied forms a substantial part of the copyright work and an enquiry whether the whole design containing the element which has been copied is substantially the same design as that which enjoys design right protection. The enquiry which the judge carried out was that set out in paragraph 119 of his judgment. At no stage did the judge refer to the different test applicable to design right infringement. On that test it may not be enough to copy a part, even a substantial part. Regard has to be had to the overall design which enjoys design right. Here the judge was diverted to certain difficult questions arising as to substantiality in copyright infringement which may have no relevance to design right infringement.
20. Accordingly, I would allow the appeal. Neither counsel has suggested that this court could substitute its own conclusion on the question of design right infringement. Thus I would remit that issue to the judge. As a final observation, I would add that the judge may have to consider the point, which has not been argued before us, whether design right law protects hedgehogs rather than foxes. If so, it should be borne in mind that Lord1 Hoffmann's observation was made in the context of a comparison between an abstract and a detailed artistic work, and moreover, that it is rare in the law to find that a rigid classification can be insisted on.

Lord Justice Robert Walker:

21. I agree.

Lord Justice Thorpe:

22. I also agree.

Order:

23. Appeal allowed no order as to costs of appeal.
24. Declaration made by the Judge to be set aside and remitted to patents county court the issue whether the design containing the element that has been copied is substantilly the same design as that which enjys design right protection.
25. No Order As to the costs of the appeal.
(Order does not form part of the approved judgment)