Scottish Court of Session Decisions

Ante, July 20, 1887, 24 S.L.R. 750; 14 R. 1072.

This note of suspension and interdict was presented by Walker, Hunter, & Company, of the Port-Downie Ironworks, Falkirk, against the Hecla Foundry Company, ironfounders and range manufacturers, Dobbie's Loan, Glasgow, and the individual partners, to have the respondents interdicted from “infringing the copyright of a registered design for kitchen-range fire-doors, No. 16,596, the property of the complainers, conform to certificate of registration, dated 10th November 1884, granted in pursuance of the Patents, Designs, and Trade-Marks Act (46 and 47 Vict. c. 57), and in particular, from making, vending, or using any fire-doors for kitchen-ranges having a moulding, cast or fixed, thereon, in manner shown in the design.”

In defence the respondents maintained various pleas, which, as stated in the opinion of the Lord Ordinary infra, were held to have been previously decided, as reported ante 24 S.L.R. 750, and 14 R. 1072. The respondents also maintained

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that the design of the door which they made was not an infringement of the complainers’ design.

The facts of the case are contained in the opinion of the Lord Ordinary infra.

The Lord Ordinary ( M'Laren) on 16th November 1887, after proof, found it proved that the respondents had infringed the suspenders’ exclusive privilege by making for sale fire-doors of the pattern produced, and granted interdict.

“ Opinion.—This is the second action at the instance of Walker, Hunter, & Company for contravention of the exclusive privilege which they claim under the Registration of Designs Act.

The design was for a door for a convertible range, and it has been shortly described as a rectangular door with a moulding on the top of it. It appears that in these convertible kitchen-ranges the fire is opened by lifting or sliding back the fire-cover, and opening the fire-door in front of the bars, and then there is, I think, a bar that folds over, but when the fire-place is closed, then, according to the usual construction of these ranges, a moulding was cast on the fire-cover or fall-bar which might or might not be continuous with the moulding on the other part of the grate, but generally was of the same pattern or design. The practice has been to put the moulding upon the fire-cover or fall-bar, but, for reasons which I need not discuss, this was found inconvenient, and it occurred to the complainers as an improvement that the moulding might be cast upon the door, with the result that when the door was closed the appearance of the range was exactly the same.

In a former action the validity of the exclusive privilege claimed was contested. It was contested upon three different grounds. First, it was said, having regard to the evidence in support of the exclusive privilege, that it was rather the subject of a patent than of a certificate under the Designs Acts if it was of any value at all. Then, I think, it was also said to be of no value, or that the improvement was so inconsiderable and so obvious as not to be entitled to protection. And then, further, the validity of the claim was disputed on the usual ground of anticipation, and there were, I think, two cases of anticipation brought forward, neither of which, however, was established. In the opinion of the Court, on a reclaiming-note from my judgment, all those objections to the exclusive privilege were rejected, and interdict was granted against the attempted infringement. If this had been a patent case the questions to which I have referred could not have been tried again, because I should unquestionably have granted a certificate in terms of the Act that the validity of the patent had been in question in the former case. But as the special provisions to which I am referring have not been made part of the copyright law the respondents in this case were entitled to raise these questions over again. It had been intended, I understand, to try the question of anticipation, but for the reasons which I stated in the course of the discussion I held that no such question could be tried under this record.

With regard to the other objections—to wit, that this design is unworthy of legal protection at all, or that, if entitled to protection, it should be given by means of letters-patent—I need do no more than refer to the judgment of the Inner House in the former action—a judgment which unreservedly disposes of these objections, and which I conceive to be authoritative on this question, superseding the necessity of any further consideration of these points by myself.

There remains therefore only the question of infringement, whether the design of the door, which is undoubtedly made by the Hecla Company, is an infringement of the complainers’ exclusive privilege? Now, the respondents’ door is a rectangular door surmounted by a moulding, and except that the moulding has a different section from the moulding of the complainers, if those two doors were looked at in face as represented in the drawing (or in the manner of an elevation), then I say that, except in the particular which I have just noticed, I think there is really nothing to distinguish the two designs. But when you come to look at the respondents’ door in section a difference becomes apparent, because the door is so attached to its hinges that instead of fitting into the space between the adjoining plates of the range, it lies over them, and the moulding, instead of fitting into the space left between the mouldings at the two sides, overlaps them, having its corners rounded off so as to make a transition more agreeable to the eye than if they had been cut off square. The difference that I refer to does not come out by comparing the respondents’ drawing with the design for which the certificate was granted. It only comes out when the door is seen in section, and when the manner of its superposition upon the grate is considered.

Now, upon the question of whether there is here an infringement nothing was said to the contrary of the complainers’ proposition that mere differences in the outline of the moulding would not take the respondents’ design out of the protected copyright. That seems to me perfectly clear, because there is nothing original in the moulding, and in the claim of registration it is made evident that the registration was claimed not for the particular moulding but for the material form given by placing a moulding—any suitable moulding —upon a fire-door in the described position. Well, then, I have to consider if there was no exclusive privilege claimed for the particular pattern of moulding, whether the exclusive privilege is limited to the case of a moulding which exactly fits into the adjoining mouldings, so as to present a continuous flowing surface, or whether it is not a privilege granted for putting such a moulding upon a fire-door in such a manner as to exclude air and to accomplish the object which had previously been accomplished by putting the moulding upon the fire-cover or fall-bar. It occurred to me, as one way of testing the question, to consider whether it would be possible for the respondents to obtain any right by registration of their design consistently with the right already given to the complainers? There is evidence to the effect that the respondents’ pattern had been independently devised, and that they had not wilfully copied the complainers’ design. But of course that will not avail them if the copyright obtained by the complainers is good. I think the true way of looking at the question is to assume, or suppose for the sake of the argument, that the respondents had been aware of the registered design, and with that knowledge had set about to make a

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design of their own which should not copy or colourably imitate the complainers’. Now, if they had set about making a design in that view, and had produced the complainers’ design, with this difference, that the moulding of the door overlapped the adjacent mouldings at the side instead of fitting between them, the question is, whether that design involves the exercise of any inventive skill at all, and whether it is capable of being distinguished from the complainers’ design as a design?

I think that in this case the difficulty, if there be any, is in finding out the question for consideration, because when that is once stated I think it carries its own answer. If it be the question whether, in the assumed knowledge of the complainers’ pattern, and wishing not to imitate it, the respondents have successfully achieved their object in making the door which is the subject of complaint, I think no one can doubt that the attempt is a failure—that to present what is a mere copy of the complainers’ door, but to place it so that the moulding overlaps instead of fitting in between the adjacent parts, is not an independent design, but a very plain and obvious imitation of the complainers’ design. I do not call it a colourable imitation, because I rather think it is the identical thing. It is either directly and literally the complainers’ design, or it is in my judgment a very obvious imitation of it, and that being my view of the facts I shall give decree in the terms sought, interdicting the respondents from making, vending, or using fire-doors of the description complained of, with expenses.”

The respondents reclaimed, and argued—The question was one falling under section 58 of the Act of 1883 (46 and 47 Vict. cap. 57) and the words “such design or any fraudulent or obvious imitation thereof.” It could not be said that the respondents’ door was either the same as the complainers,’ or a fraudulent or obvious imitation thereof, as the differences were apparent to the eye, besides being clear to a mechanic. In looking at a design of this kind it was only fair to look at it as a whole in order to determine its resemblance or dissimilarity to another design. The respondents’ design showed a material novelty, and in respect of the novelty the complainers were not entitled to interdict— Houlds-worth v. M'Crea, 2 L.B., R. & I. App. 380; Barran v. Lomas, 1880, 28 Weekly Reporter, 973.

Counsel for the respondents (complainers) were not called on.

At advising—