England and Wales High Court (Chancery Division) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION

		CH 1991 A NO. 12254 Royal Courts of Justice Strand, London, WC2A 2LL
		23rd June 1995

Mr. JUSTICE LADDIE:

This is an action for copyright infringement relating to the design and manufacture of oil seals. It is brought under the transitional provisions of the Copyright, Designs and Patents Act, 1988. The seals in issue are of the sort used where a rotating shaft passes out of a housing containing oil. The seal must be of such a design that oil inside the housing does not leak out while dirt does not leak in. At the same time, the seal must not prevent rotation of the shaft. The way such a seal is located in a housing can be depicted schematically as follows:

Figure 1:



The plaintiff

It is convenient to begin an introduction to the plaintiff company and its business by considering the career of its current joint chairman, Mr. Ronald McCoy. Mr. McCoy has been engaged since at least 1963 in the oil seal business. From 1963 to 1973 he was employed by Super Oil Seals Limited, at least for part of that time as a metal spinner. Super Oil Seals made a variety of oil seals but the process of manufacture was such that where a customer required a seal of an unusual size it would have to accept a delay of up to 12 weeks for delivery. Standard size seals were kept in stock. Mr. McCoy applied his experience as a metal spinner to this problem and developed a design for a seal in which the sealing element was leather, a material commonly used for this purpose at the time, and the casing was spun metal. This enabled Super Oil Seals to make to shorter delivery times. They developed a niche market in this area. In his spare time, Mr McCoy and an associate, Mr. Albert Glaze, ran a small unincorporated business which made spun metal parts on a subcontract basis. In about 1972, Mr. Brian Tombs joined Mr. McCoy and Mr. Glaze in that business and in 1973, after leaving Super Oil Seals, formed the plaintiff, Autospin (Oil Seals) Limited. The complete range of seals made by Super Oil Seals all used either leather or moulded elastomeric material to retain the oil.

In about 1974, Mr. McCoy began experiments to try and develop a new design of seal for sale by Autospin.

The seals in issue

It will be appreciated that a seal of the type at issue in these proceedings, as illustrated in Figure 1 above, is of a generally doughnut shape. The shaft which is to be sealed has to pass through the hole in the middle. Mr. McCoy was interested in seeing whether the spinning techniques which had been used successfully in Super Oil Seals could be harnessed to a new design in which the sealing material was derived from a piece of flat rubber sheet, thereby avoiding the expense and delay of creating moulded rubber or leather inserts. Within a year or so he had developed a design which met this objective.

The shape of the seal:

The overall design of a simple version of Mr. McCoy's seal is illustrated in the following drawing (derived from exhibit P11):

Figure 2:



The parts from which the seal is made are as follows:

Figure 3:



The outer shell, inner shell and base washer are all made of steel. The inner shell is hooked under a lip on the outer shell and presses down on the base washer. Between the base washer and the outer shell a rubber sealing element is clamped. This sealing element is made from a flat circular disk of rubber from the middle of which a circle is cut. Because of the spatial relationship between the turn-up on the inner edge of the outer shell and the base washer, the inner part of the rubber seal is bent round the edge of the base washer and stands up towards the inner shell. It will press against the outer surface of the shaft and this pressing action is assisted by the garter spring.

The way in which the outer shell is made is of some significance to the plaintiff's claim. First a circular disk is cut from a flat sheet of steel of the correct thickness. A hole of a particular diameter is cut from the centre of the disk. The resulting blank is then put on a lathe and its outer portion is turned up. This latter is achieved by the process called 'spinning'. It is illustrated in the 'before' drawing in Figure 4 below. Then a forming washer, not the base washer, is cut from a sheet of flat steel. This washer is cut so as to fit accurately within the outer shell. The outer shell with the forming washer in it is then put back on the lathe and the inner part of the outer shell is spun up. It is bent round the edge of the forming washer as shown in the 'after' drawing in Figure 4 below. By this means the 'turn-up' of the outer shell is formed. The forming washer is then removed and may be discarded.

Figure 4:



The flat disk of rubber is now inserted as is the base washer and the inner shell (which has been made by spinning a suitably dimensioned perforated disk of steel) and the outer edge of the outer shell is spun over to lock the inner shell in position, pressing down on the base washer.

Although seals to this design were first made at some time in or about 1975, customer resistance to the new design was encountered and the first was not sold by the Autospin until 1977. They have proved a considerable success.

The dimensions used in making the seal:

To be effective in use, oil must not be able to pass between the seal and the housing in which it is located nor between the shaft and the rubber seal. The customer placing an order for a seal will therefore specify, inter alia, the size of the shaft to be sealed, the diameter of the hole in the housing within which the seal must fit and also the thickness of the required seal. The latter two dimensions are those identified respectively as A and B in Figure 5 below. Needless to say, in use none of the metal parts of the seal must touch the shaft. The size of the shaft specified by the customer also therefore sets a lower limit for dimensions D and E. However the plaintiff claimed that in designing and manufacturing its seals there were three dimensions which are of great importance. These are the inside diameter of the outer shell before spinning, the inside diameter of the base washer (dimension F in Figure 5) and the inside diameter of the forming washer. These were described as being of 'critical importance' in the report produced by Professor Davies for the plaintiff.

Figure 5:



The importance of these dimensions was explained as follows. The precise location of the inner edge of the rubber member after assembly is critical to the function of the seal. The location of this is determined by the relationship between the rubber, the turn-up on the outer shell and the inner face of the base washer. It is the turn up which forces the rubber round the edge formed by the inner surface of the base washer. The precise shape and location of the turn-up is determined by the inner diameter of the outer shell before spinning and the inner diameter of the forming washer around which the outer shell is spun to form the turn-up. The relationship between these parts in the manufacture of a seal is the same for a particular thickness of seal (dimension B in Figure 5) made from particular gauges of steel, no matter what the diameter the finished seal has to have. Instead of having different specified dimensions for each of the parts of the hundreds or thousands of different size seal which the plaintiff may have to make over the years, it is possible to specify the three dimensions referred to above by reference to the size of shaft to which the seal will be fitted.

It may be convenient to explain this by reference to an example. Take a ¹/₂ inch thick seal which is to be made with inner and outer shells fashioned from 0.48 gauge steel. The diameter of the hole (or "pierce") cut in the middle of the metal disk which will form the outer shell is specified as being the same diameter as the shaft (of course after spinning it will have been bent inwards as shown on Figure 5 and will not, therefore, touch the shaft). Similarly the pierce made in the base washer will be ³/₈ inch greater than shaft size while the pierce for the forming washer will be ¹/₄ inch greater than shaft size. If, therefore, a ¹/₂ inch thick seal for fitting to a 3 inch shaft is made, the pierce for the outer shell will be 3 inches, the pierce for the base washer will be 3³/₈ and the pierce for the forming washer will be 3¹/₄. On the other hand if a ¹/₂ inch seal is for fitting to a 10 inch shaft, the equivalent dimensions will be 10, 10³/₈ and 10¹/₄.

Mr. McCoy gave evidence that he was able to make up tables or charts specifying the dimensions of these three 'pierces' in relation to shaft sizes for different thicknesses seals and using different thickness steel. His evidence, supported by Professor Davies, was that the dimensions on these tables were critical and had to be followed closely by anyone who wished to make seals to the Autospin design. An example of such a table is as follows:

A typical chart:



In this table, 'Width' represents the width or thickness of the seal, 'O/P', 'B/W' and 'F/W' represent respectively the size of the pierce in the outer shell, base washer and forming washer as compared with the diameter of the shaft. A negative figure indicates that the diameter of that pierce is smaller than the diameter of the shaft.

Mr. McCoy's evidence was that he made up tables containing this sort of detail in notebooks and would instruct Autospin employees to follow them when making seals. Eventually copies of the tables were made up into charts which were stuck to the wall inside the factory at Autospin for ready reference purposes.

The defendant and its employees

One of Autospin's first employees was Mr. Brian Phillips. He left school at 16 and immediately commenced work with Autospin in about 1974. He became expert in cutting the metal discs which were to be formed into the seals. He helped find some of the dimensions which were subsequently recorded on some of the charts. He left Autospin in 1989 to run his own sports retailing business. Another early employee of Autospin was Mr. Raymond O'Connor. He was a very skilled metal spinner who was employed by Autospin from 1978 until about July 1989. While there he was involved in every aspect of oil seal manufacture although he was not involved in cutting the steel blanks. A third former employee of Autospin was Mr. John Eling. He also was a skilled metal spinner and was employed by the company from about 1976 until July 1989. In the late 1980's neither Mr. O'Connor nor Mr. Eling had a good working relationship with Mr. McCoy or Mr. Tombs, who at that time was also a senior executive of Autospin. As a result Mr. O'Connor and Mr. Eling left to form their own business, Beehive Spinnings, the defendant in this action. They used their spinning expertise to make a variety of products such as light fittings, tankards and gravestone pots. Mr. O'Connor's evidence was that in early 1990, because of the recession, orders for these types of products simply dried up. He and Mr. Eling therefore decided at that time to start making oil seals. This was facilitated when Mr. Phillips, whose own retail business had now foundered, joined them in 1990. It is not in dispute that the seals made by the defendant are visually and dimensionally very close indeed to those produced by Autospin.

The plaintiff's claims

In its pleadings the plaintiff raised three claims against the defendant. First it said that the manufacture of the defendant's seals constituted an infringement of the copyright in certain drawings for the plaintiff's seals. Secondly it was said that the manufacture of defendant's seals constituted an infringement of the copyright in the compilation of measurements in the charts made by the plaintiff. Finally it was said that the coding system adopted by the plaintiff to identify its own seals is also the subject of copyright and has been copied by the defendant. Although this latter claim was abandoned at the beginning of the trial, it was commented upon during the course of submissions and it is right that I should make some observations upon it. As a matter of convenience I will deal with this matter first.

The claim in relation to the plaintiff's coding system

When a customer wants a seal he has to identify three dimensions: the thickness of the seal, its outside diameter and the diameter of the shaft which will pass through it. The plaintiff has adopted a simple coding system to identify the seals it makes. The nature of the numbering system was described in the following words by Professor Davies:

"Following the manufacturing process, each seal is stamped on its side with code letters and numbers which uniquely define the manufacturer, the size of the seal and the type of seal. As an example a typical number is AS50037562R. The AS is a code for Autospin, the first three numbers are the outside diameter of the seal multiplied by 100, the next three numbers are the shaft diameter to which the seal fits multiplied by 100 and the last two numbers are the seal width multiplied by 100. The R indicates a rubber sealing element. The example given above therefore relates to 5 in. outside diameter, 3.75 in. shaft diameter and 0.625 in. width seal with a rubber sealing element (It should be noted that the last digit in the seal width is omitted)."

There is no dispute that the defendant uses the same system save that the letters AS are replaced by the letter B, representing the word "Beehive". In the statement of claim the following was said:

"[The plaintiff is the owner of the copyright in] the code numbering system devised and used by the plaintiff for the purpose of precision manufacture of its range of oil seal products" [paragraph 6(a)] and

"The code numbering system is particularly crucial in relation to the successful marketing and administration of sales and supply of the said oil seals." [paragraph 7]

On the other hand the defendant argued that the coding system adopted by the plaintiff and the defendant was common to the trade.

As I have said, at the trial this claim was dropped but not before the issue was addressed in the witness statements. Some of these statements were challenged in cross-examination for the purpose of attacking the reliability of some of the plaintiff's witnesses. In particular the plaintiff relied upon the evidence of their expert, Professor Davies who, after describing the system, said:

"As far as I am aware no other previous seal manufacturer has used such a coding system".

The clear message and purpose of this evidence was to support the plaintiff's claim that its system was unique. In the course of the trial it became apparent that not only was this coding system used by others in the trade but that the Professor did not know what coding systems were used by other companies and had made no effort to find out. Indeed during the course of preparing his report, the Professor had access and referred to the catalogue of another seal manufacturer, Pioneer Weston. Had he looked even at that catalogue he would have seen that the same coding system was used by that company. I can only assume that had the Professor taken the simplest steps to find out what systems were used by others in the trade he would have felt quite unable to lend the weight of his reputation to the plaintiff's assertions.

The evidence of expert witnesses tends to be treated with great weight by courts. There is always a risk that the evidence of those directly involved in the litigation may be tailored to coincide with the witness' interest in the outcome of the dispute. On the other hand courts expect experts to approach the litigation more dispassionately. Their evidence is of particular value precisely because normally it is not the evidence of someone who has an interest in the outcome of the litigation. However the special respect and weight given to experts' evidence carries with it the responsibility to approach the task seriously. An expert and those who help him prepare his report should not be surprised if the court expresses strong disapproval if that is not done. In my view it is lamentable that the Professor should have lent his weight to this claim without taking the trouble to satisfy himself that it was appropriate to do so. The maintenance of such an unjustified claim by the plaintiff and the support given to it by the Professor reflects poorly on both. Mr. Birss, who represented the plaintiff at the trial but was only instructed about one week before it commenced , very properly dropped this claim at the beginning of his opening. In my view it should have been abandoned very much earlier. The assertion in the statement of claim that the plaintiff's code numbering system is 'particularly crucial' is and always was unjustified.

The claim in relation to drawings

In the statement of claim the plaintiff claims that it is the owner of the copyright in certain drawings relating to is seals. For the purposes of this judgment I shall refer to these drawings as the 'full drawings'. Figure 1 is an example of such a full drawing. As is normal in industrial copyright cases, the plaintiff alleges that the defendant's product has been copied from the plaintiff's which in turn is derived from the plaintiff's copyright drawing. In this way it is said that the defendant's product indirectly reproduces the, or a substantial part of the, artistic copyright in the full drawing. On the third day of the trial the plaintiff sought leave to amend the statement of claim to add a claim to the infringement of the copyright in sketches which it says preceded the full drawings originally pleaded. It says that the full drawings are the best evidence of the contents of the sketches. That application to amend was resisted by Mr. Burton on behalf of the defendant. However I gave leave, the question of costs being left to be determined after judgment.

The full drawings:

In relation to the full drawings, there was no dispute that they were produced by a qualified person, that any copyright which might subsist in them was owned by the plaintiff, that the defendant had copied its seals from the plaintiff's seals and that, if the latter were derived from the full drawings, the copying had been of a substantial part of the design depicted on the drawings. However Mr. Burton argued that the drawings were not the subject of copyright because they were not original and that, even if they were, there was no infringement because they were not part of chain leading to the production of the defendant's product. In particular he says that the plaintiff's seals were not made from the full drawings so the design of the defendant's seals cannot be traced back to them.

As far as originality is concerned, I have no hesitation is holding that the defendant's objection fails. It was sought to be suggested that the design of the plaintiff's seals and the drawings for them were trite and basically the same as other seal designs of earlier date. This attack fails. A drawing will be treated as original for copyright purposes if the author expended more than trivial effort and relevant skill in its creation. On the other hand if a drawing is merely copied from an earlier two dimensional work then it will lack originality. The fact that similar designs or drawings exist does not demonstrate lack of originality save to the extent that it leads the court to come to the conclusion that copying from an earlier drawing must have taken place. In this case there was no evidence that the design of the plaintiff's full drawings were copied from pre-existing seal drawings. On the contrary this was expressly disputed by Mr. Tombs, the relevant author. There was nothing in the material adduced at the trial to lead me to conclude that Mr. Tombs was not telling the truth on this issue. I hold the full drawings to be the subject of copyright.

Mr. Burton's main argument was one of non-infringement. In the course of cross-examination it became clear that the first seals were made and sold some years before any of the full drawings were produced. Furthermore the evidence showed that the full drawings were not used in the factory for the purpose of manufacture. The exception to this was that when a seal to a special design was required then a special drawing might be made for the purpose of instructing those in the plaintiff's factory. It appears to me that this has nothing to do with the full drawings for the standard seals which are the only drawings in issue in these proceedings. The fact that the full drawings relied on in this action were not manufacturing drawings is consistent with the fact that none of them bears any dimensions, manufacturing instructions or other markings which would normally be present if they were. In fact it was accepted that the full drawings were used for sending to customers to show them what they were going to get. Mr. Birss argued that since some customers placed orders for seals, at least after the first few years, on the basis of full drawings sent to them, the fulfilling of such orders meant that the seals had to be made 'to' the drawings and could therefore be regarded as reproductions of the drawings. In my view this is wrong. The fact that a customer is sent a drawing or, for example, sees an illustration in a catalogue does not mean that the goods supplied in response to an order from that customer are reproductions of the drawing or illustration. The drawing or illustration in such a case is merely an advertising aid. The customer would get precisely the same seal even if the drawings were not sent or the catalogue had not been seen. The products delivered to the customer are not made from, and do not reproduce, those drawings.

In the light of the evidence referred to above, the defendant has succeeded in showing that there is no chain of causation leading back from its seals to the full drawings. The claim of copyright infringement under this head fails.

The sketches:

Mr. Birss frankly and properly stated that it was only after the possible weaknesses in the plaintiff's case on the full drawings became apparent during the course of cross examination that the plaintiff realised that it might be necessary for it to rely on earlier sketches. The existence of such sketches had never been suggested in any of the plaintiff's pleadings, discovery or witness statements but were referred to for the first time during the cross-examination of Mr. McCoy. As I have said, I gave leave to amend. It seems to me that this was the correct course to adopt because, had leave not been granted, it would probably have been open to the plaintiff to commence new proceedings in relation to the sketches. It is much better that all the copyright issues between the parties be resolved in one action.

In relation to this claim, Mr. Burton argues that there is no evidence that such sketches exist, that it is unclear what they consisted of if they did exist and that any such sketches would be devoid of originality. The latter argument I reject for the same reasons as I rejected it in relation to the full drawings. I am prepared to accept that such sketches as did exist included at least some which involved skill and effort above the trivial. I also reject the first argument. Mr. McCoy said that he made sketches. I accept his evidence. On the balance of probabilities during the one or two years that he was developing the seal design from 1974 onwards it is likely that he did produce some sketches of some sort. The only surviving sketch relating to seal design which was produced in evidence is one which is to be found in a little notebook which Mr. McCoy has kept. That sketch, which is on lined paper, is as follows:

The sketch in the notebook:



I am prepared to accept, with considerable hesitation and in the absence of argument, that this sketch involved sufficient skill to entitle it to copyright protection but it is not suggested that that copyright has been infringed. It is not argued to relate to any of the seals in issue. However Mr. Birss says that the full drawings constitutes the best evidence of what the development sketches relating to the seals in issue would have looked like. In my view he is wrong. The full drawings were made by Mr. Tombs from the finished seals. They record what the seals look like. Mr. Tombs never saw any sketches and never suggested that the full drawings were derived from them. The full drawings are therefore no evidence whatsoever of what the sketches may have looked like.

In my view there is no evidence which would lead the court to decide that on a balance of probabilities any sketch existed which looked like any of the seals now being produced by the plaintiff and the defendant. Probably Mr. McCoy made occasional jottings on scraps of paper, much like the one reproduced above. There is no evidence that any sketch even of a retained feature of the current seal designs was ever made. Mr. McCoy was not asked to explain what the sketches depicted let alone identify how many there were. I suspect he would have been unable to do so even had he been asked. The onus to identify a copyright work which has been reproduced by the defendant lies on the plaintiff. It has failed to discharge it. It follows that I find that the plaintiff has not made out its claim based on the copyright in the sketches. In these circumstances it is not necessary for me to consider the separate point as to whether a claim to copyright infringement could have succeeded if, as I think was likely, any sketches produced by Mr. McCoy were no more than crude jottings of unrefined concepts going through his head. It may be that such sketches could not be said to have been 'reproduced' in a copyright sense in any product which finally came out of the development programme even if the product incorporated some of the same general concepts.

For these reason I reject the plaintiff's claims based on copyright in artistic works.

The claim in relation to charts of measurements

The case relating to the charts as maintained at the beginning of the trial may be summarised as follows:

(1) The charts embody a compilation of critical dimensions for making seals. The compilation was made and refined at great cost and with considerable effort over a period of some years. The charts are therefore original literary works protected by copyright.

(2) The dimensions on the chart are used for making the plaintiff's seals, i.e. the seals are made in accordance with the dimensional information on the charts. Each such seal therefore reproduces a substantial part of the charts.

(3) Mr. O'Connor and Mr. Eling copied the critical dimensions from the charts onto pieces of paper. Those pieces of paper were either used themselves in the defendant's premises or were turned into charts which were then used in the defendant's premises. The documents made by the defendant were reproductions of a substantial part of the plaintiff's charts. They therefore are infringements of the literary copyright.

(4) Further or alternatively to (3), the critical dimensions from the charts were memorised by Mr. Phillips.

(5) The defendant has made copies of the plaintiff's seals using the same critical dimensions which were either derived from the copy documents (as per (3) above) or from memory (as per (4) above). The copy seals therefore are reproductions in three dimensions of the critical information from the plaintiff's charts and are infringements of the literary copyright in them.

I should mention that I visited the defendant's premises in the company of solicitors, counsel and experts and watched Mr. O'Connor and Mr. Phillips making a seal. Earlier Professor Davies had visited the defendant and watched the manufacture of seals there. On both occasions the seals were made without the aid of any documents.

Reproduction of a substantial part of a literary work

I understand that the defendant did not dispute originality in the charts of dimensions. Furthermore it is not disputed that if the defendant, through its employees, has copied the plaintiff's charts onto other pieces of paper, this would constitute an infringement of the copyright in them. However it is convenient to consider the allegation of paper-to-paper copying later and to turn attention to the substantive issue of whether or not, if copying of the information on the charts is proved, the manufacture of seals by use of that information infringes copyright. In other words, this part of the case raises the question whether copyright in a literary work can be infringed by the production of a three dimensional article.

Argument in favour of a three dimensional article being a reproduction of a literary work:

The argument in favour of this is easy to state. Copyright in a literary work, such as a written story, gives protection not just to the words used but may also extend to the themes and ideas incorporated into it if they are sufficiently substantial. For example a novel may be turned into a play with much of the dialogue replaced. What the copyright protects is the relevant work and skill embodied in the work. In the example given this may well include the combination of the main themes, incidents and characters in the story. It may be said, therefore, that copyright protects that combination. Both the 1956 and 1988 Acts require the relevant skill and effort to be fixed in some material form. Frequently this takes the form of words on a page. But it is not the form of fixation which is protected, it is the relevant skill and effort involved in creating the literary work.

The type of literary work at issue in this case is a compilation. Once again, it is not the mere form of words or notation used which justifies copyright protection for a compilation, it is the author's skill and effort expended in gathering together the information which it contains. For example, it is clear that the physical effort of writing down names and addresses to produce a street directory does not of itself justify the creation of compilation copyright in it. It is the effort and skill expended in finding out who lives at which addresses in which road which merits protection [see Kelly v. Morris (1866) LR 1 Eq 697]. When someone copies a directory he infringes because he reproduces the product of the author's skill and effort in compiling information, not his literary style. The relevant skill may be that involved in collecting the information, selecting it or arranging it, or all of these. The skill and effort deployed by the author is not in any conventional sense 'literary' yet copyright protection is given to it and the product of the author's endeavours is called for convenience a 'literary work'.

If those principles are applied to a case where an author has expended considerable skill and effort in working out the dimensions of an article and writing them down, the compilation so created is a literary work and protected by copyright. The Act (whether 1956 or 1988) then protects the work from being reproduced in any material form.

It is well established that the copyright in a two dimensional drawing (an 'artistic work' under the relevant legislation) may be infringed by reproducing it in a three dimensional article. This was the law well before the legislation expressly provided that it was so [See King Features Syndicate Inc. v. O and M Kleeman Ltd [1941] AC 417]. By parity of reasoning, since copyright in a literary work may be infringed by reproducing it in any material form, why should it not be an infringement to take a compilation of dimensions and reproduce it in the form of a three dimensional article which embodies those dimensions? After all, the alleged infringer has made use of the author's skill and effort in discovering and bringing together the relevant dimensions.

The argument can also be put another way. As I have mentioned, copyright in a drawing can be infringed by reproducing it in a three dimensional form. It is possible to define any shape in words and letters. Therefore a design in a drawing can be defined equally accurately in non-graphic notation. In fact many three dimensional articles are now designed on computers. A literary work consisting of computer code therefore represents the three dimensional article. Surely if it is an infringement of copyright in a two dimensional drawing to make a three dimensional article from it, it must follow that it should also be an infringement to produce the article from the equivalent literary work which contains the same design information and is just as much a product of the author's design skill. Mr. Birss says that the legislature seems to have believed that this was the correct view. He points to s. 51 of the 1988 Act (which does not directly affect the issues in this case). That section provides, so far as relevant, that

"it is not an infringement of any copyright in a design document ... recording or embodying a design for anything other than an artistic work or typeface to make an article to the design ..." (s. 51(1))

and that

"'design document' means any record of a design, whether in the form of a drawing, a written description, ... data stored in a computer or otherwise." (s. 51(3))

Mr. Birss says that it is apparent that the legislature thought that it was possible to infringe the copyright in a written description (i.e. a literary work) by turning it into an article and s. 51 was introduced to limit the scope of this type of infringement at least for the future.

Against this, my attention was drawn to statements in two cases. In the Privy Council in Interlego A.G. v. Tyco International Inc [1988] RPC 343, Lord Oliver said:

"It has always to be borne in mind that infringement of copyright by three-dimensional copying is restricted to artistic copyright (section 48(1)). To produce an article by following written instructions may be a breach of confidence or an infringement of patent, but it does not infringe the author's copyright in his instructions." [page 373]

Mr. Birss points out that this view was obiter . In the Interlego case the plaintiff was arguing that the writing on its drawings was part of the drawing and therefore an artistic work. It certainly was not arguing that any literary copyright was infringed. Furthermore it is possible to criticise the view that s. 48(1) of the 1956 Act 'restricted' three-dimensional copying to artistic works.

The second case was Brigid Foley Ltd v. Ellott [1982] RPC 433 in which the plaintiff was seeking to enforce the copyright in a knitting guide. Megarry V.-C. stated:

"I did not call upon Mr. Pumphrey to argue this point, since it seems to me quite plain that there is no reproduction of the words and numerals in the knitting guides in the knitted garments produced by following the instructions. The essence, I think, of a reproduction (and I do not attempt to be exhaustive) is that the reproduction should be some copy of or representation of the original. I do not see how anyone looking at the knitted garment could then say "Well, that is a copy of, or a reproduction of, the words and numerals to be found in the knitting guide". By a process of counting up the number of stitches, and so on, in the knitted garment one might be able to work back and produce the knitting instructions; but that is a very different matter from saying that the garment is a reproduction of those instructions." [page 434]

Here also the plaintiff was asserting that his knitting guides were artistic works and that instructions on them were covered by that type of copyright. It is therefore not authority on the question of what amounts to infringement of copyright in a literary work.

Conclusion:

The arguments advanced in support of a finding of infringement are logical but copyright law has been bedevilled by the too rigorous application of legal logic. Over the years extensions of the scope of copyright protection in the area of literary works are applied by parity of reasoning to artistic works and vice versa. Advances in relation to one type of copyright work are taken as having cleared the path for similar advances in relation to other types of copyright work. Furthermore many copyright cases involve defendants who have blatantly stolen the result of the plaintiff's labours. This has led courts, sometimes with almost evangelical fervour, to apply the commandment "thou shalt not steal". If that has necessitated pushing the boundaries of copyright protection further out, then that has been done. This has resulted in a body of case law on copyright which, in some of its further reaches, would come as a surprise to the draughtsmen of the legislation to which it is supposed to give effect. Few attempts to reverse this expansion have succeeded although dissatisfaction with the current law has been ventilated here by, inter alia, the House of Lords in British Leyland Motor Corpn. Ltd v. Armstrong Patents Co Ltd [1986] AC 577 and the Privy Council in the Interlego case. Similar concerns have been expressed in other common law countries. I do not think it is right simply to adopt the approach that because a particular type of article has been held to be a reproduction of the copyright in an artistic work, it would also amount to a reproduction of the copyright in an equivalent literary work.

When the court has to decide whether a particular act constitutes a substantial reproduction of a copyright work in my view it must have regard to the nature of the copyright work in issue. What amounts to a substantial reproduction of a particular type of artistic work may well not be a reproduction of a particular type of literary work. Indeed it should be remembered that the categories of copyright work created by copyright legislation are, in some cases, very broad and include materials which have little in common. Maps, charts and plans were protected as literary works under the 1911 Act but as artistic works under the 1956 and 1988 Acts. Therefore under the former Act they were treated as brethren to plays and novels while under the latter they are treated as being in the same category as paintings. In the case of literary work, what is covered is a wide range of products of the human mind which are express or recorded in some form of writing or notation. But it is not the mechanics of expression or recording which justify the copyright but the relevant skill and labour of the author which is captured in the words or notation used. It is for this reason that literary copyright covers such diverse works as telegraph codes^[1], football coupons^[2], railway timetables^[3], street directories, novels, electrical circuit diagrams^[4] and poetry. When considering what amounts to infringement of the copyright in, say, a compilation, there is no compelling reason why the courts should pretend that the works covered by literary and artistic copyright form a coherent whole. It should be borne in mind that it is not enough to say that the defendant has 'used' the plaintiff's work. He must have reproduced it. In my view the court should ask the question "is it accurate to say that the alleged infringer's article is, from a common sense point of view, a reproduction of this particular type of literary work?". In answering that question in this case, it is potentially misleading to look over one's shoulder to see what the response would have been if the compilation had been an artistic work or even a different form of literary work. Thus it may well be sensible to say that making a three dimensional article from a data file in a computer (a literary work) which precisely defines the shape of the article is to reproduce it. However, in my view, even if the plaintiff's charts in this case had included the three critical dimensions of some of the parts used for making a seal, it would not be right to say that making a seal to those dimensions is to reproduce the charts. Those dimensions say virtually nothing about the shape of the seal, they merely indicate some critical dimensions used in the manufacturing process which results in the creation of the seal.

Indeed, in my view, on the facts, this case is even weaker than that. The charts do not contain even the three critical dimensions. They contain instructions for the calculation of those dimensions. For example the figures in the first column of the chart set out above are equivalent to the following instructions:

"For a ¹/₂ inch seal, first find out from the customer the dimension of the shaft to which the seal is to be fitted. Then the outer pierce will be the same dimension as the shaft, the pierce for the base washer is calculated as that dimension plus ³/₈ inch and the pierce for the forming washer is calculated as that dimension plus ¹/₄ inch. "

The charts say nothing more about how a seal is to be constructed. In my view, just as it cannot be a reproduction of literary copyright in a recipe for a cake to make a cake to the recipe, so it is not a reproduction to follow such mathematical instructions.

For these reasons I hold that the claim to infringement of copyright in the charts also fails.

In the light of this it is not strictly necessary to consider the factual questions relating to whether or not the defendant had copied. Nevertheless I have heard the evidence and in view of the fact that this case may go further, I should express my views on those issues as well.

The allegation that the defendant made copy charts.

When Mr. O'Connor and Mr. Eling left Autospin to set up their own business they had no experience in metal cutting. This was not disputed. The plaintiff says that even before Mr. Phillips joined Beehive, they were making seals. In view of the alleged criticality of the dimensions on the charts, Mr. O'Connor and Mr. Eling needed to have copy charts available to them. It was alleged that these charts existed but that they had either been lost, destroyed or hidden since then. In support of this case the plaintiff relied on the evidence of Mr. McCairn who joined Autospin in 1986 and is the works director of the company.

Mr. McCairn says that for some two years before Mr. O'Conner and Mr. Eling left Autospin, he noticed them both copying down seal dimensions and other information in small, soft cover notebooks. These data were copied either from production cards used on the jobs they handled (according to his witness statement) or from the charts on the wall (according to his oral evidence). He says that although he asked them once why they were copying the data, he never challenged the legitimacy of their doing so during those two years because, he says, he wanted to gain their confidence. He says he never told anyone else in Autospin about this, for the same reason. Further he says that some six months before Messrs O'Connor and Eling left Autospin he looked over a wall and through a window into some premises occupied by them and saw oil seals on a shelf. He therefore suspected at that time that they were in competition with Autospin. He says he challenged them on this but simultaneously offered to get them some work to do in their spare time from a friend of his. Once again he did this to gain their confidence and, again, he didn't tell anyone else in Autospin what he had allegedly discovered. He says that on one occasion Mr. O'Connor asserted that he and Mr. Eling had looked into the patent and registered design position and had found that the Autospin seal design was not protected.

The story from Messrs O'Connor and Eling could not be more different. Their evidence was that they did not start making seals until well after they left Autospin, they never copied anything down and were not asked any questions on that subject by Mr. McCairn, they did not have any seals in their premises when Mr. McCairn allegedly looked in and, in any event, it would have been impossible for Mr. McCairn to have done so because there were no windows to look through (a point they sought to support by photographs of their old premises). They deny that they had asserted to Mr. McCairn that they knew about the patent and registered design position.

I find that Mr. O'Connor and Mr. Eling were truthful witnesses. I cannot say the same about Mr. McCairn. I have no hesitation in saying that his evidence was in most material respects relating to these issues untruthful. These allegations made against Mr. O'Connor and Mr. Eling were shameful and mischievous fabrications.

In his reply speech, Mr. Birss withdrew the allegation of chart-to-chart copying and the allegation that Messrs O'Conner and Eling had started making seals while still employed by Autospin. He was right to do so. However I think it is right that I expressed a view of the evidence on this issue because it was used to back up the more important assertion, namely that the dimensions on the chart were critical and that therefore they had to be copied, either onto pieces of paper by Messrs O'Connor and Eling or by memory by Mr. Phillips.

The allegation that the defendant copied the dimension in the charts in its products.

The plaintiff says that it only gathered together the information on the dimension charts after years of trial and effort, that the dimensions are critical to the manufacture of workable seals and that the defendant must be using the information in the charts which has been memorised by Mr. Phillips. That Mr. Phillips does not need charts now is not in dispute. We all watched Mr. Phillips make the metal parts for spinning into a seal without any notes or drawings.

At the core of this part of the case is the allegation that the dimensions are critical. If so, then the defendant must be using them to make its competing seals. In support of its case, Autospin relied primarily on the evidence of Professor Davies and Mr. McCoy.

Professor Davies gave firm evidence in his report that the dimensions on the charts were crucial. It became apparent however during the course of Mr. Burton's cross-examination that the Professor had done nothing to test whether this was true. He had been told that the dimensions were crucial by Autospin and he merely accepted it. He did not try to show how far one could depart from the dimensions on the chart before an unsatisfactory seal was produced. At the end of his evidence he was given three sets of dimensions and asked which of them would work and which would fail. He said the first would work and the other two would probably fail. In fact the latter two were taken directly from one of the charts in issue while the 'success' differed from the dimensions given on the chart. I am not assisted by his evidence.

Mr. McCoy on the other hand gave evidence as a man of considerable experience in the industry. I found him truthful. I have no reason to doubt his evidence that much time and effort went into gathering together the information on the charts. However during the course of cross-examination he accepted that the charts had been altered numerous times over the last 15 to 18 years. In the early days this occurred as frequently as once a month. One set of dimensions was replaced by another. However the seals made to the discarded, i.e. 'wrong', dimensions appear to have worked perfectly well. The rate of returns from customers is and has always been remarkably low.

I am not persuaded that the dimensions on the chart are in any sense critical. Evidence was given that they are used by inexperienced operators to help them make good seals. I have no doubt that they are very useful and valuable for that purpose. But because they are not critical, it follows that the fact that Mr. Phillips can make the parts for functional seals is no indication that he is using the dimensions in the charts. Indeed, since the charts have changed so many times, it was not clear to me what version of the dimensions it was that he was being alleged to have used. Mr. Phillips, as a result of his great expertise in this trade, has a 'feel' for what are appropriate dimensions for the parts of a seal. In deciding on the size of the pierce for the outer shell, forming washer and base washer he is relying on his extensive experience of making these products but the plaintiff has not proved that he is, even subconsciously, recalling the mathematical information on any chart produced in this action. I hold that this allegation of copying also fails.

For the reasons set out above, I dismiss all the claims made against the Defendant.

Note 1    Anderson v. Lieber Code Co [1917] 2 KB 469.    [Back]

Note 2    Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. [1964] 1 WLR 273.    [Back]

Note 3    Leslie v. Young [1894] AC 355.    [Back]

Note 4    Anacon Corpn. Ltd v. Environmental Research Technology Ltd [1994] FSR 659.    [Back]