Scottish Court of Session Decisions

This was a process of suspension and interdict at the instance of Walter Macfarlane & Company, ironfounders, Glasgow, against William Binnie, David Allan Arnot, David Hutchison, and Alexander Hutchison, all ironfounders in Glasgow, the partners of the Oak Foundry Company.

The complainers averred that for thirty-two years they had carried on a large business in Glasgow as architectural, sanitary, and artistic ironfounders, and that the iron-work coming from their “Saracen Foundry,” Possilpark, Glasgow, was well known in the trade in all parts of the world.

They further averred that in connection with their business they had caused to be prepared, at great expense, an illustrated catalogue of drawings or designs of their various castings of ironwork,

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relating both to private houses and public institutions, with numbers, titles, notes of dimensions, scales, and other letterpress, and this work had proved of very great pecuniary value to them in the prosecution of their business, and had reached a fifth edition, which was published in the year 1871. This fifth edition, however, it was averred, was substantially a new work, as every drawing in it was made direct from patterns, castings, or full sized drawings belonging to the complainers, and it had been prepared at a cost of upwards £12,000.

The complainers further averred that in addition to the illustrated catalogue just referred to they had caused to be prepared an illustrated price list of their castings, which was also of great value to them in connection with their business. Both these books were alleged to be the result of great labour and skill, and were distributed by them gratuitously among their customers with the view of promoting their business. Each of the books was claimed as the exclusive property of the complainers, who alleged that they had a copyright therein, also that the books were entered at Stationers' Hall in conformity with the statutes, and that although the illustrated price list was registered in name of the leading partner it was truly the property of the firm. The certificates of entry were also produced.

The complainers further averred that they had recently discovered that the respondents had prepared and issued an illustrated catalogue of castings, the drawings in which were in many instances copies of, or only colourably different from, the drawings and designs contained in their catalogue and price list already referred to, and that large portions of their catalogue had been transferred to the respondents' catalogue and now appeared therein. They also alleged that the respondents' catalogue was not the product of independent labour or skill, and that it derived any value which it possessed from the respondents having availed themselves unwarrantably of their labour and experience.

The complainers also alleged that their publications were thus being extensively pirated by the respondents, and that they were suffering thereby serious loss and damage; that the copying of their drawings had been effected by means of tracing and lithographic transfer paper, and that this process had been carried on systematically, in the knowledge and on the instructions of the individual respondents, or on one or more of them.

The respondents averred that it had long been the custom for manufacturers and dealers in iron-work to print and circulate catalogues with drawings and illustrations of the articles manufactured or sold by them, that many such books were in circulation before the publication of the fifth edition of the complainers' catalogues so printed and circulated, and that many of the drawings in the complainers' books now founded on had been copied from these prior publications. They also alleged that many of the articles of iron-work manufactured or dealt in by different makers or dealers were frequently identical in outline and design, and were not protected by any copyright, and that a similar identity existed between the drawings in the complainers' catalogues and their own, as well as in those of numerous other manufacturers.

The complainers had mentioned on record a variety of designs which they alleged the respondents had pirated; these the respondents averred to be incapable of being pirated, as they were representations of the commonest articles, such as pipes, pillars, baths, which had no peculiarity of design, and which were in every-day use before the complainers' firm existed. They also alleged that many of the designs to be found in the complainers' books had been copied by them from catalogues of their trade opponents, and that the complainers could therefore have no copyright or property in these designs.

The respondents' 10th statement of fact was as follows:—“The catalogue founded on by the complainers contains many statements which to the knowledge of the complainers when they published the same were untrue, and intended to mislead the public, and are contrary to public policy. In particular, the complainers in the said fifth edition of their catalogue, have in numerous instances untruly described as ‘registered’ and ‘patent’ and advertised for sale as ‘registered’ and ‘patent,’ designs and articles which are not and never were registered or patented, and have also in many instances described as ‘registered’ and ‘patent’ articles or designs of which the patent or registration had expired long before the date of said fifth edition, and in many cases the designs which the complainers allege the respondents have wrongfully copied are improperly marked as aforesaid, as e.g., the following— ”[here followed the references to certain designs]. In statement 11 they set forth various designs marked by the complainers as registered, when in fact they were not and never had been so. In statement 12 they averred that a specified number of designs marked as registered in the catalogue, though once registered, had ceased to have that protection before the catalogue was published. In statement 13 they averred “The complainers sometimes registered a design of a complex article and again registered some of the parts thereof. They also in some instances registered as a complete design a part of a complex article, the design of which was too old to be registered, and in other cases having once registered the design of a complex article they without further registration append the registered mark in the books founded on to the various parts of the complex article, these parts being represented as independent designs. For example, the railing No. 57 was registered on 17th March 1866, and an ear, a part thereof, No. 34, is again registered on 1st October 1868. The ear No. 31, is registered on 1st October 1868, this ear being part of the railing No. 94, which was at that time too old to register. The fountain No. 8, is unregistered; it appeared in a former issue of the complainers' catalogue as registered, but in the book now founded on the columns of this fountain are reproduced and marked as registered;” and so on in various particulars. In statement 14 they averred that 66 designs appeared in the complainers' book under the same registration mark, which indicated that they had been registered at the same date, and averred that before such registration many of them were well known to the public. In statement 15 they averred that of four designs that were specified, and which the complainers had marked as registered, the complainers were not the owners of original designs

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and had no right beyond that of any one of the public in them. In statement 16 they averred that the complainers used in this book the word “patent” as applicable to many articles none of which were patented.

The respondents further alleged that their catalogue was entirely the work of original labour, that every drawing was made from an actual pattern and that in no case were the designs taken from the respondents' books. When there was similarity, this arose from the drawings of both parties being representations of the same kind of articles.

The complainers pleaded that as the catalogue and price list were fit subjects for copyright, and as they were the product of their labour and outlay, the respondents were not entitled to appropriate them or any material part of them for their own benefit. They also pleaded that the copyrights of the books was vested in them. Further—“(4) The respondents' averments are irrelevant and insufficient; and, in particular, their averments as to items marked in the complainers' catalogue as registered or patented are not relevant to be remitted to probation.”

The respondents pleaded—“(4) The note should be refused, in respect—(1st) The respondents have not violated the complainers' rights. (2d) The complainers' catalogue and price list are not fit subjects of copyright. (3d) The complainers have no copyright in the books founded on; et separatim, they have no copyright in the designs or drawings as to which complaints are made. (4th) The complainers' books are not the result of independent labour; et separatim, the drawings or designs therein are not the invention or the property of the complainers, and they have no exclusive right thereto. (5) The complainers having fraudulently and wrongfully violated the various statutes dealing with copyright and registration of designs as condescended on, they are not entitled to insist in their present pleas.”

The Lord Ordinary allowed the complainers a proof of their averments in the closed record, and the respondents also a proof of their averments, except those contained in articles 10 to 16 inclusive of their statement of facts.

“ Opinion.—As the pursuer, who is entitled to have the lead in the matter of proof, desires that I should dispose of his objection to the relevancy of the defenders' counter case, I think in the circumstances that I ought to dispose of it at this stage. Another reason for dealing with this question of relevancy is that if the averments that have been the subject of discussion constitute a substantial defence to the action, it is possible that in the event of their being rejected the defender may be induced to reconsider his position, and that a proof may be avoided. Now, dealing with the complainers' fourth plea, that the respondents' averments ‘as to items marked in the complainers' catalogue as registered or patented are not relevant,’ my opinion is that these averments do not constitute a relevant defence to the action. I think that where a publisher of a copyright book comes into Court complaining of infringement through the publication of designs protected by his copyright, it is not a relevant answer to say that these designs have some writing or some mark affixed to them which amounts to a false representation, or a representation of something which is not true. It is easy to see that if such a defence were admitted it would open a very wide field of inquiry in actions of infringement, and it might be very difficult in some cases to say whether the disqualifying statements in printed books were or were not false representations in the same sense as the registered marks here are alleged to be so. I think it would be very difficult for a Court of Justice to enter upon a criticism of published works in that spirit, in order to find out whether they contain representations of such a character as to render the work not a suitable subject for protection by copyright. I dont know of any precedent for such an inquiry, and I think the policy of the law is, unless there be something distinctly immoral or pernicious to society, to give to every book registered at the Stationers' Hall copyright protection, leaving it to public opinion and public criticism to correct any errors which may occur in the work. Certainly the fact that a book contains erroneous representations is no reason for allowing a third party who has not written it to be the means of propagating these representations and giving them wider publicity by copying them. That would not be a way of enforcing public morality. Then, leaving these general considerations, there is a doctrine of a more limited character, viz., that where a party is seeking to enforce some right of the nature of a monopoly given to him by statute, he must walk strictly by the statute. The patent laws afford various illustrations: for example, if the patentee claims in his specification something which is not his own invention, and does not avail himself of the means given by the statute of disclaiming with a view to confine the patent to what is really his own, then he will not succeed in an action for infringement, nor will he succeed if he has omitted to describe his invention in such a way that it can be clearly understood and worked; because he is held to have made a contract with the public by which he receives protection on condition of making a full disclosure of his invention, on condition that he discloses the invention fully, and claims nothing but what is his own invention. Just as in cases of private contracts, where the law will not always give a remedy to a party who has himself committed a breach of the contract; neither in the quasi contract with the State shall the patentee have redress by interdict or damages if he himself has not fulfilled the counter prestations of his contract with the public. But the defenders' averments here don't raise a question of that character. It is not said that there has been any omission to comply with the provisions of the Copyright Acts, or anything done in violation of the prohibitory injunctions of the Copyright Acts. The averment is that the complainer, while seeking the benefit of the Copyright Acts, has been guilty of a fraud upon the Acts protecting designs by registration. Now, I know no authority for holding that it is the duty of the Court to enforce the fulfilment of one regulating statute by refusing redress to a party who seeks it under another statute, with the provisions of which he has fully complied. Each statute must be considered on its own merits. Of course, if the averments are true, the complainers could have no possible protection under the Registration of Designs Act. They are not here seeking such protection. But I cannot, on the assumption that they have done what is prohibited by a penalty in the Registration

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of Designs Act, deny them protection for their copyright, which, according to their contention, has been infringed by the respondents. The case of Ford, although not precisely in point, appears to me to proceed upon the principle which I have endeavoured to express, and so far it is an authority; indeed, I think it is none the less an authority that the statutes out of which the question arose were different, or that the question was between a party who claimed protection at common law for his trade-mark on the one hand, and an infringer who alleged on the other hand that a patent right had been claimed. If there was room for any distinction, I think probably there might have been more room for the application of the doctrine for which Mr Dickson contends, where the relief was sought upon common law, the Court having a larger jurisdiction to admit defences to actions founded on common law than they have under statute. If I were to refuse interdict, or to admit the averments in question as a defence to the action for interdict founded on the Copyright Act, I should be simply denying effect to that Act on grounds and exceptions that are not contained within the statute itself, and for which, so far as I can see, there is no warrant. That is my opinion on the series of averments in question. I was at first disposed to pronounce no judgment upon the point until after a proof: but if it is desired I shall give effect to my opinion by allowing a limited proof, that is, under the exception of the articles commencing with statement 10.”

Against this interlocutor and note the respondents reclaimed (by leave of the Lord Ordinary) and argued—That the complainers were not entitled to the protection of either the “copyright” or the “copyright of designs,” statutes inasmuch as they had themselves infringed the provisions of these statutes. In order to show that the complainers had so acted, it was of the greatest importance that the respondents should be allowed to lead evidence on these averments of which the Lord Ordinary had refused them a proof. These books were not a fit subject for copyright, they had no merit to bring them within the protection of the copyright statutes; they were mere trade advertisements.

Authorities—Copinger on Copyright, 84 to 93; Sebastian on Trade Marks; Leather Cloth Company v. American Leather Cloth Company, December 21, 1863, 33 L.J., Ch. 199, and 11 H. of L. Ca. 523; Wright v. Tallis, July 2, 1845, 14 L.J., C.P., 283; Ford v. Foster, L.R., 7 Ch. 611; 5 and 6 Vict. c. 45 and 100, sec. 4; 6 and 7 Vict. c. 65, sec. 4; 8 Anne, c. 19; 21 and 22 Vict. c. 70.

Argued for complainer—The Lord Ordinary was right in limiting the inquiry; the averments upon which the respondents ask for proof are much too vague, and the proof would be of a most complex character. What the complainers objected to was, that the respondents were copying large portions of a book which was entered at Stationers' Hall, and which was protected by the statutes 8 Anne, cap. 19, and 5 and 6 Vict. cap. 45. The books were the result of original labour, and were therefore entitled to protection; they were not to be treated in any sense as mere trade advertisements. The complainers had patents for each of the designs to which the word “patent” was appended. There were more than 3000 designs in the illustrated catalogue, and because it was alleged that there were about thirty mistakes, was the book as a whole to be characterised as a fraud, or to be deprived of the benefit of statutory protection? The respondents could point to no case either here or in England where misrepresentations such as were alleged to have been made here were held to disentitle parties in the position of the complainer here to protection. The respondents' averments were in any view of the case irrelevant.

At advising—