Parliamentary Archives
British Leyland Motor Corporation Limited and others (Respondents)
v.
Armstrong Patents Company Limited and others (Appellants)
Lord Scarman
Lord Edmund-Davie
Lord Bridge of Harwich
Lord Templeman
Lord Griffiths
JUDGMENT
Die Jovis 27° Februarii 1986
Upon Report from the Appellate Committee to whom was referred the Cause British Leyland Motor Corporation Limited and others against Armstrong Patents Company Limited and others, That the Committee had heard Counsel on Wednesday the 16th, Thursday the 17th, Monday the 21st, Tuesday the 22nd, Wednesday the 23rd and Thursday the 24th days of October last; as on Monday the 11th, Tuesday the 12th, Wednesday the 13th, Thursday the 14th, Monday the 18th, Wednesday the 20th, Thursday the 21st, Monday the 25th, Tuesday the 26th, Wednesday the 27th, and Thursday the 28th days of November last; as on Monday the 2nd, Tuesday the 3rd and Wednesday the 4th days of December last upon the Petition and Appeal of Armstrong Patents Company Limited and Armstrong Equipment Limited, both of Gibson Lane, Melton, North Ferriby, North Humberside, HU14 3HY praying that the matter of the Order set forth in the Schedule thereto, namely an Order of Her Majesty's Court of Appeal of 21st June 1983, might be reviewed before Her Majesty the Queen in Her Court of Parliament and that the said Order might be reversed, varied or altered or that the Petitioners might have such other relief in the premises as to Her Majesty the Queen in Her Court of Parliament might seem meet; as also upon the case of British Leyland Motor Corporation Limited and British Leyland Cars Limited lodged in answer to the said Appeal; and due consideration had this day of what was offered on either side in this Cause:
It is Ordered and Adjudged, by the Lords Spiritual and Temporal in the Court of Parliament of Her Majesty the Queen assembled, That the said Order of Her Majesty's Court of Appeal of 21st June 1983 complained of in the said Appeal be, and the same is hereby, Reversed: and That the injunctions granted by Mr. Justice Foster on 19th July 1982 be, and the same are hereby Discharged: And it is further Ordered, That the Respondents do pay or cause to be paid to the said Appellants two-thirds of the Costs incurred by them in the Chancery Division of the High Court of Justice, the costs incurred by them in the Court of Appeal, and also the Costs incurred by them in respect of the said Appeal to this House, the amount of such last-mentioned Costs to include provision for three Counsel and to be certified by the Clerk of the Parliaments if not agreed between the parties: And it is also further Ordered, That the Cause be, and the same is hereby, remitted back to the Chancery Division of the High Court of Justice' to do therein as shall be just and consistent with this Judgment.
Cler: Parliamentor:
LORD SCARMAN
My Lords,
I had intended to deliver a reasoned speech in this very important appeal. But I find myself in total agreement with the speech to be delivered by my noble and learned friend, Lord Templeman: further words from me are, therefore, superfluous. I would allow the appeal with costs for the reasons which he gives.
The Copyright Act 1956 is, I gladly hear, presently under review. This case illustrates that more than redrafting with a view to clarification is needed: nothing less than an overhaul of some of the principles of the modern extended law is necessary, Judicial decision has extended copyright protection to industrial drawings of purely functional objects. These objects in themselves do not attract copyright protection; nor are they patentable, since they embody no new invention, and their design is not registrable under the registered designs legislation since they have no "eye appeal." Thus there has arisen the anomaly that in effect (though not, perhaps, in jurisprudential theory) a manufacturer can achieve in respect of such objects, (of which a Marina car exhaust pipe is but one example), a more enduring monopoly than would have been available even if the object had been, which it is not, patentable or its design had been, which it is not, registrable.
If it be right, as my noble and learned friend Lord Templeman asserts and as I also think, "that Parliament did not intend the protection afforded by copyright to a drawing should be capable of exploitation so as to prevent the reproduction of a functional object depicted in a drawing," the present review of law should lead to legislation to bring the law back within the limits intended by Parliament. This would involve a Legislative rejection of the view of the law upon which the House acted in deciding L.B. (Plastics) Ltd. v. Swish Products Ltd. [1979] R.P.C. 551.
But further it would be helpful if the current review of the Jaw could lead to incorporating in the Copyright Act the principle latent in our law but not fully discussed or expressed until the present case that the manufacturer of an article such as a motor vehicle or other "consumer durable" cannot by the exercise of copyright preclude the user of the article from access to a free market for spares necessary to maintain it in good working order.
LORD EDMUND-DAV1ES
My Lords,
The facts and the law relevant to this appeal have been spaciously discussed in the speeches prepared by others of your Lordships and which I have had the advantage of reading in draft. This obviates the necessity of my doing more than indicating with brevity why 1 concur in holding that this appeal should be allowed. Two broad questions arise for consideration: (I) Did the appellants' ("Armstrong") indirect copying of the respondents' ("BL") copyright drawings of their exhaust system constitute "reproduction" within the meaning of the Copyright Act 1956? (II) Even if the answer to (I) be the affirmative, should BL nevertheless be barred from invoking the Act to prevent such reproduction by Armstrong? I proceed to deal shortly with these questions.
Question (I)
I can find no support in the wide language of the Act or in the decided cases for Armstrong's submission that the indirect copying of drawings of functional objects (such as the BL exhaust system) is outside the Act. In particular, the decision of this House in L.B. (Plastics) Ltd. v. Swish Products Ltd. [1979] R.P.C. 551, is to the opposite effect, and, though criticised, it was in my judgment correctly decided. Learned counsel for Armstrong strongly relied on the Gregory Report (Report of the Copyright Committee (1952) (Cmnd. 8662)); and, in the light particularly of paragraph 258 thereof, the noble and learned Lord, Lord Templeman, has expressed the view that section 9(8) of the Act of 1956 failed to achieve the intended purpose of preventing the extension of the scope of copyright to such cases as the present one. My Lords, I have to say respectfully that I do not know what Parliament intended to do. Assume, as one reasonably may, that the Gregory Report was available to the legislators in 1956, and one will still have no knowledge of how far they intended to implement any of its recommendations when legislating as expansively as they did. We may think that they could, and should, have done better, but that is by the way. Recalling, as I do, the observation of Holt C.J. that "Parliament can do no wrong, though it may do several things that look pretty odd" City of London v. Wood (1701) 12 Mod. Rep. 669, 687, I hold, in common with the majority of your Lordships, that an affirmative answer must be given to this first question.
Question (II)
I have found this question far more difficult. Neither party could usefully invoke settled practice. Instead, reference was made to such topics as public policy, fair dealing, the undesirability of permitting monopolies, the maintenance of legal rights, the prohibition of derogation from grants, and the existence of an implied licence in favour of Armstrong. These and other notions were canvassed widely and at length during the hearing of the appeal. At the end of the day (I should perhaps say, at the end of very many days), I favour most the "spare parts exception" upheld in the speeches of the noble and teamed Lords, Lords Bridge of Harwich and Templeman. I nevertheless share to a considerable extent the misgivings eloquently expressed by the noble and learned Lord, Lord Griffiths, on this topic. But my doubts, though substantial and subsisting, are not sufficient to compel me to dissent from the conclusion arrived at by the majority of your Lordships. In the result, I hold that this question, like the first should be answered in the affirmative,
It follows that I concur in allowing the appeal.
LORD BRIDGE OF HARWICH
My Lords,
The respondents ("BL") claim to be entitled, as owners of the copyright in the drawings from which various spare parts of BL cars are made, to restrain other manufacturers from making and selling copies of BL's spare parts without the licence of BL. The market in spares for BL cars alone exceeds £S00 million a year. In practical terms it would seem that the claim, if well founded, is effective to confer a monopoly in this market on BL and their licensees. Its importance, therefore, can hardly be overestimated. But beyond settling the dispute between BL and those, including the present appellants ("Armstrong"), who assert their independent right to make and market copies of spares for BL cars, your Lordships' decision in the present appeal will have far reaching consequences for all sections of manufacturing industry whose products are of such a nature as to require replacement parts with any degree of frequency, where those parts can, in practice, only be effective if they reproduce the shape or configuration of the originals and where copyright is claimed in the drawings from which the original parts were made.
BL first asserted their copyright claim in relation to spare parts in 1973. fn due course they managed to persuade the majority of competing manufacturers in the spare parts market to enter into agreements whereby BL licensed the manufacture of copy spare parts for BL cars in consideration of a royalty payment on sales. Armstrong resisted BL's claim. The present litigation is concerned only with exhaust pipes. The exhaust pipe is the part of a car which is likely to require the most frequent replacement. In the lifetime of a car the exhaust may need to be renewed as many as ten times. Hence the market in replacement exhaust systems is one of the most important and, no doubt, lucrative sections of the spare parts market. At the trial much detailed evidence was led relating to a number of typical BL exhaust systems. But the issues on which the present appeal turns are issues of broad principle and, at this stage, it seems to me that most of the detail is unimportant. It is now either common ground or well established that copyright subsists in the drawings from which BL's exhaust systems are made and that the exhaust systems manufactured by Armstrong for BL cars (except the silencer components) are made by copying examples of BL systems by a process described as "reverse engineering" and are thus indirectly copied from BL's drawings, even though Armstrong have never seen those drawings, ft is from these premises that the issues of principle must be addressed.
Having lost in both courts below, Armstrong challenged the validity of BL's claim, as a matter of English law apart from the Treaty of Rome, on two broad grounds. The essence of the first contention is that copyright in a drawing whose sole purpose is to serve as a blueprint for the construction of a three-dimensional article of purely functional or utilitarian value and with no aesthetic or decorative element is not infringed by the reproduction of an identical three-dimensional article. Success in this first contention would be sufficient for success in the appeal. But if the first contention fails, Armstrong contend in the alternative that special considerations apply to the manufacture of replacement parts necessary to the repair of cars, or indeed any other machinery, which operates in law to preclude the owner of the copyright in the drawings from which the original parts were made from so enforcing his copyright as to maintain a monopoly in the supply of necessary replacement parts for himself and his licensees.
As the number of days taken by the hearing of this appeal sufficiently testifies, the argument ranged over an extremely wide field. Your Lordships, in particular, were invited to examine in detail the historical development through more than a century of legislation and case law of the related fields of industrial design and copyright protection. I make no complaint of this whatever. On the contrary, speaking purely for myself, in this highly specialised field of the law a thorough explanation of the way in which the law has evolved, which the learning of leading and junior counsel on both sides was well qualified to provide, was part of an educative process which I felt to be all the more necessary, since the House was being asked to re-examine, and in some important respects to modify, some of the fundamental concepts which have hitherto gained acceptance in this branch of the law. It is only through having had the benefit of covering the ground, with counsel's invaluable assistance, in the fullest detail that I am able to undertake the necessary task of stepping back and attempting to take an overall view of the legal framework by reference to which the issues must be decided.
The present law is to be found on the one hand in the Registered Designs Act 1949, on the other in the Copyright Act 1956 as amended by the Design Copyright Act 1968. It will be necessary to examine in more detail later certain provisions of these statutes. At the outset it is important to emphasise some fundamental differences in the nature of the protection afforded between what I will for convenience call the industrial design code and the artistic copyright code. As the argument for BL repeatedly emphasised, the industrial design code confers on the proprietor of a registered design a true monopoly, defined by section 7(1) of the Act of 1949 as:
". . .the exclusive right in the United Kingdom and the Isle of Man to make or import for sale or for use for the purposes of any trade or business, or to sell, hire or offer for sale or hire, any article in respect of which the design is registered, being an article to which the registered design or a design is not substantially different from the registered design has been applied, and to make anything for enabling any such article to be made as aforesaid, whether in the United Kingdom or the Isle of Man or elsewhere."
The artistic copyright code, on the other hand, does not purport to confer any monopoly, only, so far as relevant for present purposes, to protect the copyright owner from reproduction by copying. Provision is made by section 10 of the Act of 1949 for the grant of compulsory licences in respect of a registered design. Section 12 and the First Schedule provide for the use of registered designs for the services of the Crown by any person authorised in writing by a government department. There is no provision for compulsory licensing or for Crown use under the artistic copyright code. The maximum duration of protection under the industrial design code is 15 years. Protection under the artistic copyright code extends for the life of the author and for 50 years after his death. But perhaps most important of all are the differences in remedies. Deliberate infringements of the artistic copyright code are, infringements of the industrial design code are not, subject to criminal sanctions. More significant still, an infringer of the monopoly in a registered design is liable, subject to the defence of unwitting infringement, to pay such damages as the proprietor of the registered design can prove that he suffered from the infringement. Under the artistic copyright code, on the other hand, the infringer is liable to the copyright owner in damages calculated on the basis of a conversion of ail infringing copies as if they were the property of the copyright owner, commonly referred to as conversion damages.
It is convenient to consider the legislative antecedents of the industrial design code as they appeared in the Patents and Designs Act 1907. This conferred a similar monopoly on the proprietor in the application of a registered design to any article in a class for which it was registered as the Act of 1949. Section 93 of the Act of 1907 contained the following definitions, reproducing, in effect, the definition of "design" in section 60 of the Patents, Designs and Trademarks Act 1883 (46 & 47 Vict. c. 57):
'"Design' means any design . . . applicable to any article, whether the design is applicable for the pattern, or for the shape or configuration, or for the oranament thereof, or for any two or more of such purposes, and by whatever means it is applicable, whether by printing, painting, embroidering, weaving, sewing, modelling, casting, embossing, engraving, staining, or any other means whatever, manual or mechanical, or chemical, separate or combined;
'"Article' means (as respects designs) any article of manufacture and any substance artificial or natural or partly artificial and partly natural."
A new definition of "design" was substituted by section 19 of the Patents and Designs Act 1919 in the following terms:
"'Design' means only the features of shape, configuration, pattern, or ornament applied to any article by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device."
Finally, the current definition is found in section 1(3) of the Act of 1949, which provides:
"In this Act the expression 'design' means features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged solely by the eye, but does not include a method or principle of construction or features of shape or configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform."
The significance of these successive definitions, in relation to the argument, derives from the fact that, as we shall see, at all events before the passing of the Act of 1968, provisions in the Copyright Acts 1911 and 1956 appear to have been intended to make the protection afforded by the industrial design code and the artistic copyright code mutually exclusive. Counsel for Armstrong relied on this mutual exclusion to mount a powerful argument based on the anomaly which, if BL's claim is well founded, subsisted in the law from 1919, or at the latest 1949, until 1968, in that it afforded the longer and stronger protection available under the Copyright Acts to such purely utilitarian articles as exhaust pipes, which, by virtue of the exclusionary words in the 1919 and 1949 definitions of "design", could never have qualified for any protection at all under the industrial design code. This argument relied on the construction put upon the phrases in the 1949 definition "features which . . . appeal to and are judged solely by the eye" and "features of shape or configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform" by your Lordships' House in Amp Inc. v. Utilux Pty. Ltd. [1972] R.P.C 103. It was there held that, in considering appeal to the eye it was the eye of the customer not the court, which was relevant, and that the functional exception excluded articles designed solely with a view to functional efficiency. As a counter to this argument for Armstrong, and in an attempt to minimise, if not to eliminate, the scope of the suggested anomaly, counsel for BL invited your Lordships to adopt a very much narrower construction of the exclusions in the 1949 definition than that which the House applied in the Amp case. They submitted that "features which . . . appeal to and are judged solely by the eye" means no more than features which can be visually discerned and appreciated, and that the functional exception in the definition applies only to articles whose design is mandated by their function, in the sense that only an article of the precise shape or configuration chosen would be capable of performing the relevant function at all. Your Lordships were referred to numerous cases decided with reference to the 1883, 1907 and 1919 definitions, and it was suggested that the modified language incorporated in the definition of "design" in 1919 and 1949 was, in each case, derived directly from judicial language used in construing an earlier definition, and so used in a context which supported the narrow meaning contended for. I am prepared to accept that before the decision in the Amp case [1972] R.P.C. 103 this view of the law was widely held but, whatever view I might take if the matter were free of authority, as to which I express no opinion, it could not be an appropriate exercise of the power to depart from earlier decisions of the House to reject the construction of the Act of 1949 adopted in the Amp case on a point which is at most only of peripheral relevance to the issue now to be decided. Whatever anomalies in the law may arise from the Amp decision, we must, it seems to me, accept them and attribute to them such importance as they merit.
I turn now to the Copyright Acts. A number of statutes in the 18th and 19th centuries attached various forms of copyright protection to various products of literary, dramatic, musical and artistic creative endeavour. But the Act of 1911 was the first attempt to provide a comprehensive code of copyright protection. Subject to defined conditions relating to publication, which are not presently relevant, the Act conferred copyright on "every original literary, dramatic, musical and artistic work." By the definitions in section 35 "literary work" included maps, charts and plans, and "artistic work" included, inter alia, works of drawing. Copyright was defined by section 1(2), so far as relevant, as meaning "the sole right to produce or reproduce the work or any substantial part thereof in any material form whatsoever." As under the Act of 1956, the term of copyright was the life of the author and 50 years from his death, deliberate infringements were subject to criminal sanctions and an infringer was liable to pay conversion damages. Section 22(1) of the Act of 1911 provided:
"This Act shall not apply to designs capable of being registered under the Patents and Designs Act 1907, except designs which, though capable of being so registered, are not used or intended to be used as models or patterns to be multiplied by any industrial process."
Subject to possible exclusion from copyright protection by this provision which, on the basis of the Amp case [1972] R.P.C. 103, could not in any event have continued after the Act of 1919 amended the definition of "design", it is not, I think, disputed on behalf of BL that, if the claim they now seek to enforce under the Act of 1956 is valid, it would equally have been enforceable under the Act of 1911 on the basis that Armstrong's exhaust pipes were reproductions in a material form of works of drawing of which BL were the copyright owners.
An important landmark is the decision of this House in King Features Syndicate Inc. v. O. & M. Kleeman Ltd. [1941] A.C. 417. The plaintiffs were the owners of the copyright in original drawings of the well known cartoon character "Popeye the Sailor." Dolls and brooches depicting Popeye had been manufactured and marketed by the plaintiffs' licensees. The defendants, without any licence from the plaintiffs, made and marketed copies of the licensed Popeye dolls and brooches. It was held that a three-dimensional copy of another three-dimensional object which in turn was a reproduction of a drawing entitled to copyright as an artistic work infringed the copyright in that work. On an entirely different point, a defence based on section 22 of the Act of 1911 failed. All their Lordships held that the question of the applicability of section 22 to exclude copyright protection from a design capable of registration under the Act of 1907 must be decided once and for all by ascertaining whether the author originally intended the design to be used as a model or pattern to be multiplied by an industrial process. If he did not, then the copyright protection once attaching could not be destroyed by susequent use of the design, even with the consent of the copyright owner, as a model for industrial reproduction, I find this latter conclusion surprising. The phrase used in section 22 is "not used or intended to be used" etc. (emphasis added). It seems to me a little difficult to understand what significance the House's decision allowed to the words I have emphasised. However, the point is now merely academic, since the Act of 1956, by section 10, provided more elaborate machinery, which remained effective until amended by the Act of 1968, to make the protection afforded by the industrial design code and the artistic copyright code mutually exclusive.
The definition of "artistic work" in section 3(1) of the Act of 1956 includes "the following, irrespective of artistic quality, namely . . . drawings." Nothing turns on section 3(2) which declares the subsistence of copyright in "every original artistic work which is unpublished, and of which the author was a qualified person at the time when the work was made." By the definitions in section 48(1) "'drawing' includes any diagram, map, chart or plan;" and "'reproduction' ... in the case of an artistic work, includes a version produced by converting the work into a three-dimensional form, or, if it is in three dimensions, by converting it into a two-dimensional form." Section 49(1) provides that "any reference to a reproduction ... of a work . . . shall be taken to include a reference to a reproduction ... of a substantial part of the work." These are the basic provisions on which BL's claim is founded. Applying the statutory language in its ordinary meaning to the undisputed facts, so it is submitted on behalf of BL, Armstrong's exhaust systems are versions produced by converting into a three-dimensional form drawings of which BL own the copyright and which fall squarely within the definition of "artistic work."
Before examining the arguments adduced by Armstrong in opposition to the claim, it is appropriate to complete the consideration of the relationship between the industrial design code and the artistic copyright code by considering section 10 of the Act of 1956, both as originally enacted and as amended in 1968. The broad effect of the original section 10 was to limit the remedies available in virtue of the copyright in an artistic work, where a design, as applied industrially, resulted in a reproduction of that work, and that design had either been registered under the Act of 19*9 or had been applied industrially without registration, by barring their application to any act for which a remedy was available under the Act of 1949 or would have been available if the design had been duly registered.
Thus from 1911 to 1968 we see an unbroken legislative policy of maintaining a clear, even if not always fully effective, distinction between industrial design protection and artistic copyright protection. But in 1968 this policy was suddenly reversed and the effect of the amendments to section 10 of the Act of 1956 by the Act of 1968 was to restore full copyright protection to those artistic works affected by the limitation imposed by the original section 10 but to limit its duration to 15 years. Thus, since 1968 an artistic work which is the subject of a corresponding design registered under the Act of 1949 has beer able for 15 years to enjoy both the monopoly conferred by that Act and the full protection of copyright under the Act of 1956.
The underlying theme of Armstrong's attack on BL's claim is the manifest absurdity of conferring, not merely on BL's drawings as such, but, in effect, on the exhaust pipes themselves, which could never qualify for the protection of a registered design under the Act of 1949, the much more effective protection which the Act of 1956 gives to an artistic work, with its 50 year term, its criminal sanction and its threat to an infringer of liability for conversion damages. Counsel's ingenuity has deployed a great variety of arguments in an attempt to translate this theme into a sustainable ground for impugning the validity of BL's claim in law, I listened to them with the undisguised sympathy which I thought the underlying theme fully merited. But I will not attempt to trace the many threads of argument. Most of them proved to lead nowhere or to be refuted by clear authority. In the end it would seem to be essential, in order to sustain any argument capable of supporting Armstrong's main attack, to assert a distinction between, on the one hand, the skill contributed to the copyright drawing of a purely functional article by the draftsman as such, variously referred to in the argument as "draftsmanship", "penmanship" or "artistic essence", and the skill, on the other hand, of the engineer or other functional designer responsible for devising the appropriate shape or configuration necessary to give the three-dimensional article which the drawing represents its operational efficiency. The argument recognises that the two skills may be combined in a single individual or, as in this case, in a single team working together. It is urged, nevertheless, that in the case of such an article as an exhaust pipe, or indeed anything else whose value rests exclusively in its utility and function, indirect copying by reverse engineering makes no use of the skill of the first kind and there is therefore no misappropriation of what is described as the "copyrightable part" of the drawing.
The attempt to base a limitation of copyright protection on this distinction encounters formidable obstacles at the outset. It is clear on authority that a copyright drawing must be considered as a whole even where, as in this case, the shape depicted in the drawing is not shown to scale but is, as explained in the judgment of Oliver L.J. [1984] F.S.R. 591, in some respects indicated by co-ordinates. The suggested distinction would necessitate imposing a significant restriction on the statutory definition of reproduction as including a version of an artistic work "produced by converting the work into a three-dimensional form." Such a restriction would be hard to reconcile with the inclusion of diagrams in the definition of "drawing." It becomes harder still in the light of section 9(8) of the Act of 1956 which provides:
"The making of an object of any description which is in three dimensions shall not be taken to infringe the copyright in an artistic work in two dimensions, if the object would not appear, to persons who are not experts in relation to objects of that description, to be a reproduction of the artistic work."
This provision seems to presuppose that the three-dimensional article produced from some technical drawing or diagram may be such that only an expert in the relevant technical field will recognise that the one is a reproduction of the other. But if the relation between drawing and object is apparent to the non-expert then there will be infringement of copyright.
Even if, however, it were possible to put upon the language of the Act of 1956 a construction favourable to Armstrong's main contention, I do not think that course is any longer open in the light of the decided cases.
The first case under the Act of 1956 in which the protection of copyright in an artistic work was held to prevent the reproduction of functional three-dimensional articles from copyright drawings was Dorling v. Honnor Marine Ltd. [1965] Ch.l. The plaintiff complained of the manufacture by the defendants of kits of parts for making up into sailing dinghies from plans and drawings in which the plaintiff owned the copyright. The only two points in issue in the Court of Appeal were whether, in the absence of registration under Act of 1949, the defendant was protected by section 10 of the Act of 1956 and, if not, whether section 9(8) of the Act of 1956 afforded any defence. The Court of Appeal decided both points against the defendants on grounds which have no relevance for present purposes. Apart from these issues, the validity of the copyright claim appears to have been common ground, or at all events not to have been challenged on any of the grounds which have been so extensively canvassed in the present appeal. The principle accepted in Dorling v. Honnor Marine Ltd. has been applied in many subsequent cases, but the only authority which it is now necessary to consider is the decision of this House in L. B. (Plastics) Ltd. v. Swish Products Ltd. [1979] R.P.C 551. That case was concerned with the design of a plastic knock-down drawer system. The dispute had these features in common with the present appeal, first that the subject matter was an object of purely functional and utilitarian value and devoid of any "appeal to the eye" and secondly, although there was some evidence of direct use by the defendants of the plaintiffs' drawings, the finding by Whitford J., the trial judge, in favour of the plaintiffs was firmly based on indirect copying of the relevant drawing by the use by the defendants of one of the plaintiffs' drawers as the model on which features of their own drawer were substantially based and this finding was affirmed by your Lordships' House. In the present case your Lordships have had the advantage of seeing the parties' printed cases in the Swish case and also a very full note of the argument in that case of junior counsel for the defendants. These leave no doubt that the essential issue of principle which underlies the main contention advanced by Armstrong in the present appeal was raised and to some extent argued in the Swish case. The scope and range of the arguments there deployed were no doubt very much more limited than those of which your Lordships have now had the benefit. But it is impossible to say, as was somewhat faintly submitted by counsel for Armstrong in reply, that the Swish case was decided per incuriam. If it was rightly decided, it is fatal to Armstrong's main contention. Recognising this, counsel for Armstrong boldly invited your Lordships to depart from it under the Practice Statement (Judicial Precedent) [1966] 1 W.L.R. 1234. But the line of authority to which the House gave its imprimatur in the Swish case has now been followed for more than 20 years and must have had a profound impact on many aspects of industrial practice. In these circumstances, even if a more persuasive argument for rejecting the principle which it applies could be derived from the language of the Act of 1956, I should think this clearly to be a case where it must be left to legislative action to make any change in the law that may be appropriate. But I must add that I regard the present law as highly unsatisfactory in at least two respects. First, copyright protection for functional designs, as extended to articles of functional utility manufactured in accordance with those designs, would certainly seem to be capable of abuse as a means of obtaining many of the advantages conferred by patent monopoly while circumventing the many stringent conditions and safeguards to which patent protection is subject. Secondly, whatever protection the industrial designer may need to safeguard the product of his skills against piracy, I find it difficult to suppose that a rational legislator, devising a comprehensive code ab initio for the protection of intellectual property, would deliberately include a provision for the recovery of conversion damages in respect of industrial products which infringe the protection accorded to industrial designs. In the field of fine arts substantially the entire value of a copy accrues from the work of the original artist. This is surely the rationale of the provision for conversion damages for infringements of copyright. In the field of industrial design the designer contributes only a modest fraction of the value of the product. Thus, to award conversion damages for infringing industrial copies of a protected industrial design is irrationally generous to the designer and punitive of the infringer.
The alternative argument in support of the appeal has been mainly canvassed on the basis of an implied licence. This terminology is primarily derived from the cases concerned with the repair of articles which are subject to patent protection. Letters patent, on their face, always granted to the patentee the exclusive right "to make, use, exercise and vend" the invention. A literal application of this language would lead to the absurdity that a person who acquired the patented goods would infringe the patent if he used or resold them. To avoid this absurdity the courts had recourse to the doctrine of implied licence. In the field of repair it is clear that a person who acquires a patented article has an implied licence to keep it in repair, but must stop short of renewal: Dunlop Pneumatic Tyre Co. v. Neal [1899] 1 Ch 807; Sirdar Rubber Co. Ltd. v. Wellington Weston & Co. (1907) 24 R.P.C. 539. In the latter case Lord Halsbury said at p. 54J:
"The principle is quite clear although its application is sometimes difficult; you may prolong the life of a licensed article but you must not make a new one under the cover of repair."
The question of copyright in engineering drawings in relation to repair has previously been considered in a case where infringements of both patent and copyright were alleged: see Solar Thomson Engineering Co. Ltd. v. Barton [1977] R.P.C. 537. the Court of Appeal rejected both claims, holding that what was done amounted to no more than repair of the patented machinery and that the manufacture of a replacement part which prima facie infringed the copyright in one of the patentees' working drawings, having been ordered from the defendant by the owner of the machinery, was protected by the owner's implied licence. Buckley L.J. said, at pp. 560-561:
"If I am right in the view I have expressed about the existence here of an implied licence under the patent to repair pulleys by replacing worn rubber rings, it must, I think, follow that purchasers of Polyrim pulleys are also impliedly licensed to infringe the plaintiffs' copyright in their drawings to the extent necessary to enable such repairs to be carried out. To hold otherwise would be to allow the copyright to stultify the implied licence under the patent. It seems to me that considerations of business efficacy strongly support the view that this should not be the case. If it were, any purchaser of a patented article might find himself deprived of his ostensible right to repair that article by the existence of a copyright of which he would probably be ignorant when he made the purchase."
In the leading judgment in the instant case in the Court of Appeal [1984] F.S.R. 591, Oliver L.J. was prepared, it seems, to accept that the purchaser of a BL car might himself copy, or commission another to copy, the original exhaust pipe in order to provide replacements, but found it impossible to derive from this a conclusion on which Armstrong could found a defence. The relevant passage from his judgment reads at pp. 611-612:
"I can see that there are strong arguments for saying that where a manufacturer sells to a purchaser an expensive piece of machinery containing parts which are inherently likely to wear out during the working life-time of the machine, he impliedly licenses the purchaser to procure, by copying if it is more advantageous to him, those subsidiary-parts, even in a case where the manufacturer is itself willing to supply the parts at whatever it regards as an appropriate price.
"If such a licence can be implied, there can be no reason for inhibiting the purchaser, when he orders one replacement, from having two or more made against future breakdown during the anticipated life of the machine. But even allowing that such manufacture might be within the implied licence, I find myself quite unable to see how that could constitute some sort of blanket licence from the vehicle manufacturer to any member of the public to copy and manufacture, for sale in the market generally and without specific order, equipment to be made available for purchasers or users of the vehicle manufacturer's products.
"The learned judge rejected the defendant's argument based on implied licence, and in my judgment he rightly-rejected it. Such a licence cannot rest on any contractual basis, and if it rests on anything, it can rest only upon some form of estoppel as between the manufacturer of the vehicle and the manufacturer of the spare part. I can see no support for such an estoppel merely from the public sale of the vehicle."
It seems to me that when one is considering machinery which is not the subject of any patent protection, it is unnecessary and may be misleading to introduce the concept of an implied licence. The owner of a car must be entitled to do whatever is necessary to keep it in running order and to effect whatever repairs may be necessary in the most economical way possible. To derive this entitlement from an implied licence granted by the original manufacturer seems to me quite artificial. It is a right inherent in the ownership of the car itself. To curtail or restrict the owner's right to repair in any way may diminish the value of the car. In the field of patent law it may be right to start from the patentee's express monopoly and see how far it is limited by exceptions. In the field of law applied to machinery which enjoys no patent protection, it seems to me appropriate to start from a consideration of the rights of the owner of the machinery and then to see how far the law will permit some conflicting legal claim to impinge upon those rights.
I can see no reason to doubt that any owner of a BL car might exercise his right to repair the car, whenever the exhaust pipe needs replacement, by producing an exact copy of the original pipe in his own workshop or by instructing the local blacksmith to do the same. But in practical terms, of course, if the owner's right to repair is limited to these activities in a world of mass-produced goods, it is quite valueless. What the owner needs, if his right to repair is to be of value to him, is the freedom to acquire a previously manufactured replacement exhaust system in an unrestricted market. Here then we come to the heart of the issue, where there appears to be a clear conflict of legal rights, the car owner's right to repair on the one hand, the copyright owner's right, on the other hand, to use his copyright in such a way as to maintain a monopoly in the supply of spare parts. It may be a novel, but seems to me to be an unavoidable, issue for the law to decide which of the two rights should prevail over the other.
It is, I think, conceded that in certain situations resort to copyright to starve the market of necessary spare parts for a car would be legally unacceptable. As it is put in one of the written summaries of counsel's submissions which have been such a helpful feature of the presentation of counsel's arguments in this appeal:
"The respondents recognise that the owner of a vehicle or other apparatus must be able and free to deal with that article as he or she so wishes and must be able to buy spare parts lawfully on the market for that article."
Thus, to take an extreme example, suppose a car manufacturer, to encourage early obsolescence, decided to discontinue his own supply of spare parts for every model five years after it ceased production and sought to enforce his copyright in spare parts drawings to stifle any alternative source of supply. I cannot believe that in those circumstances the law would be prepared to sustain the copyright claim, nor did I understand counsel for BL to argue seriously to the contrary.
It follows that the starting point for the resolution of the conflict of competing rights to which I have referred is to recognise that in some circumstances the enforcement of the manufacturer's copyright in spare parts drawings must yield to the maintenance of a supply of spare parts to sustain the owner's right to repair. This immediately poses a problem as to where, if at all, and if so by what criteria, the law can draw a line to discriminate between acceptable and unacceptable claims to enforce copyright, which restrict the market in spare parts available to car owners for the purpose of effecting necessary repairs. The answer propounded to this problem on behalf of BL is two-fold. First, it is submitted that the problem has to be resolved by reference to other legislation directed to the control of anti-competitive practices, in particular the Fair Trading Act 1973, the Competition Act 1980, and the relevant provisions of the E.E.C. Treaty (Cmnd. 5179 - II). This answer is, to my mind, unacceptable, if only for the simple reason that to accept it would imply that, had the problem arisen before 1973, no answer could have been found to it in the combined operation of the Copyright Acts and the common law. BL's second answer is that the criterion for the maintenance of a supply of spare parts sufficient to meet the demands of car owners for the purposes of repair is one of necessity and that, so long as the manufacturer and his licensees are maintaining an adequate supply at reasonable prices, and more particularly if the manufacturer is willing to offer licences to all who wish to take them on reasonable terms, there can be no such necessity as to justify the subordination of the right of the copyright owner in spare parts drawings to the interest of the car owner in a free market in parts available for repair. This suggested answer to the problem seems to me both impracticable and unrealistic for two reasons. First, it would impose an impossible task on the court, whenever asked to decide whether a claim to copyright in spare parts drawings should be enforced, to have to determine without the aid of any defined criteria whether at the date of trial the manufacturer and his licensees were maintaining a supply on reasonable terms. Secondly, once the copyright owner had succeeded in his claim, he would be at liberty to vary his terms of trade to the detriment of owners of cars of his manufacture.
These considerations drive me to the conclusion that there is no such half-way-house solution to the problem as has been urged upon us for BL. Either the court must allow the enforcement of the copyright claim to maintain a monopoly in the supply of spare parts for the copyright owner and his licensees, regardless of any adverse effect of the monopoly on car owners; or the right of car owners to a free market in spare parts necessary for economical repair should prevail and the court should accordingly decline to enforce copyright claims as against the manufacturer of spare parts intended exclusively, as are Armstrong's exhaust systems, to be available as replacement parts for cars In need of repair. As I have already indicated, the first alternative would be unacceptable at one end of the spectrum of possible consequences. But, apart from this, it seems to me that there are sound reasons in principle why the second alternative should be preferred. By selling cars fitted with exhausts based on their copyright drawings BL have already enjoyed the primary benefit which their copyright protects. By selling those same cars BL have also created a large community of car owners who, quite independently of any contractual rights derived from BL, enjoy the inherent right as owners to repair their cars by replacing the exhaust whenever necessary in the most economical way possible.
To allow BL to enforce their copyright to maintain a monopoly for themselves and their licensees in the supply and replacement exhausts is, to a greater or lesser extent, to detract from the owner's rights and, at least potentially, the value of their cars. There is an inconsistency between marketing cars and thereby creating whatever rights attach to their ownership on the one hand and acting to restrain the free exercise of those rights on the other. The law does not countenance such inconsistencies. It may be a novel application of the principle to preclude a plaintiff from enforcing a statutory right to which he is prima facie entitled. But, as my noble and learned friend Lord Templeman demonstrates, the application of the principle to the relationship between the mass car manufacturer and those who at any time acquire cars of his manufacture is no more than an extension to a non-contractual relationship of the considerations which underlie the classical doctrine of the law that a grantor may not derogate from his grant. Subject to two further grounds of objection canvassed on behalf of BL, which I have yet to consider, it seems to me within the capacity of the common law to adapt to changing social and economic conditions to counter the belated emergence of the car manufacturer's attempt to monopolise the spare parts market in reliance on copyright in technical drawings by invoking the necessity to safeguard the position of the car owner.
A recurrent theme in the argument for BL has been that they are not effectively claiming any true monopoly in exhaust pipes, since it is open to a rival manufacturer to take a BL car, throw away the original exhaust system, examine the features of the underside of the car, and design a new exhaust system suitable to be fitted to it. I find no substance in this argument for two reasons. First, the evidence stops far short of establishing that a new system designed in the way suggested, which must take full account of the shape and configuration of the underside of the frame, various other parts located beneath it, and of the fixing points provided for the exhaust system, would, even if marginally different in shape from the original pipe, escape the charge of reproduction by copying of a substantial part of BL's drawings. Secondly, we are concerned with economic reality, and, if the BL car owner is to enjoy the freedom to have his car repaired in the most economical way possible when the exhaust needs replacing, that will undoubtedly only be achieved by straight copying.
BL's final objection on this aspect of the case is based on a comparison of the position under the Copyright Acts, on the one hand, and the Patents Act 1977 and the Registered Designs Act 1949 on the other. If the arguments advanced for Armstrong are permitted to defeat BL's claim under the Act of 1956, then it is said, there will be nothing to prevent similar arguments being invoked to defeat the statutory monopolies conferred by the other Acts when articles protected by patents or registered designs are incorporated as parts of cars. I do not accept that this follows. The rights conferred by the Acts of 1977 and 1949 are clearly distinguishable, in that they are truly and expressly monopolistic. Moreover each Act embodies its own conditions for the grant of compulsory licences which must be taken to provide such safeguards as Parliament considered necessary against the possibility of abuse of the monopoly granted. The position seems to me to be this. Where a specific part of a car which is the subject of a patent or registered design needs repair not amounting to replacement, it will be repairable under the well established doctrine of implied licence. Where the part requires complete replacement, it can, if practicable, be replaced by any alternative part, which will not infringe the patent or registered design. If only a new part made in accordance with the patent or registered design will provide a satisfactory replacement, the express statutory monopoly of the patentee or design proprietor will prevail. In contrast with the copyright in drawings, the monopoly conferred by the patent or registered design could be invoked not only against other manufacturers making infringing parts and offering them for sale, but also against the car owner, to prevent him making in his own workshop or commissioning from a third party a replacement part which infringed the monopoly.
Having reached a conclusion in favour of allowing the appeal, for the reasons indicated, I would find it unnecessary to hear further argument on the provisions of the E.E.C. Treaty on which Armstrong also rely. I would allow the appeal.
LORD TEMPLEMAN
My Lords,
This appeal is the culmination of a dispute between the appellants ("Armstrong") and the respondents ("BL") over the right to reproduce component parts required for the repair of a motor vehicle.
A car has an expectation of life of some 15 years subject to determination by careless driving. A car is a collection of hundreds of components all of which must fit together. From the time that a car is driven out of the factory gates until the day that it is consigned to the scrap heap, there is a risk that the car will be immobilised by the failure of a vital component part as a result of accident or wear and tear. BL manufacture the Marina car. The component parts of the Marina include two lengths of exhaust pipe, one length connecting the engine to the silencer and the other length running from the silencer to the rear of the car. The exhaust pipes need replacement at intervals which vary from six months to two years. Armstrong manufacture replacement exhaust pipes for the Marina and in order to do so copy the shape and dimensions of the original. BL claim that the tentacles of copyright have now reached out to prevent Armstrong from manufacturing exhaust pipes for the Marina unless Armstrong pay such royalty as BL think fit to require. Armstrong decline to pay a royalty. BL have obtained an injunction which effectively prevents Armstrong from manufacturing replacement exhaust pipes for the Marina. If this injunction was rightly granted it follows that any motorist who drives a BL car must buy his spare parts from BL at the prices fixed by BL or bear the burden of a royalty payable to BL for the privilege of buying his spare part from somebody else. The purchaser of a BL car sells his soul to the company store. The market for replacement parts for BL cars alone exceeds £800 million a year. This appeal has wide implications because the injunction granted to BL creates or recognises a monopoly in replacement parts enjoyable not only by BL and by all vehicle manufacturers, but also by all manufacturers of mass produced machinery in respect of repairs.
In the course of designing the Marina and for the purpose of transmitting instructions for the production of the Marina, BL employed draughtsmen who made engineering drawings from instructions given to them by the design engineers and showing the shape and configuration of each part of the Marina. Those drawings include recognisable drawings of each of BL's exhaust pipes by plan, elevation and section and convey in figures and words the precise angles and dimensions and description necessary to enable the exhaust pipe to be manufactured and produced in conformity with the shape of the underside of the Marina. Armstrong have never seen BL's engineering drawings and do not copy them directly. In order to provide a replacement exhaust pipe Armstrong have taken a BL exhaust pipe and copied it so that the replacement will also fit the shape of the underside of the car. Armstrong's exhaust pipe is a direct copy of BL's exhaust pipe and an indirect copy of BL's engineering drawing.
BL's claim to an injunction stems from the Copyright Act 1956. Section 3(1) provides as follows:
"In this Act 'artistic work' means a work of any of the following descriptions, that is to say, -
(a) the following, irrespective of artistic quality, namely paintings, sculptures, drawings, engravings and photographs."
By sections 3(2) and 3(3):
"Copyright shall subsist ... in every original artistic work"
subject to certain conditions admittedly fulfilled with regard to BL's engineering drawings. BL's engineering drawings are original in so far as the draughtsmen use their own skill and labour in carrying out the instructions of the design engineers and depict the exhaust pipes incorporated in the design of the Marina."
By section 3(4):
". . . copyright subsisting in a work by virtue of this section shall continue to subsist until the end of the period of 50 years from the end of the calendar year in which the author died, and shall then expire."
By section 4 the author of a BL engineering drawing' is the draughtsman but copyright belongs to his employers BL.
By sections 1 and 3(5) copyright in an original artistic work includes the exclusive right of:
"reproducing the work in any material form,"
and is infringed by "any person who, not being the owner of the copyright, and without the licence of the owner," reproduces the work in any material form. By section 48(1) "reproduction" in the case of an artistic work includes a version produced by converting the work into a three dimensional form, . . ."
BL directly reproduce BL's engineering drawing of an exhaust pipe in a material form by converting the two-dimensional drawing into a three-dimensional exhaust pipe in the course of manufacturing the Marina. Armstrong indirectly reproduce BL's engineering drawing by copying the original exhaust pipe of the Marina for the purpose of providing a replacement exhaust pipe.
Armstrong's defence to the charge that they breach BL's copyright in the engineering drawing when Armstrong make a replacement exhaust pipe is two-fold. First, Armstrong say that copyright does not extend to the direct reproduction of a functional article such as an exhaust pipe which is not protected by patent law and is not a registered design. Secondly, and alternatively, Armstrong say that BL cannot rely on their copyright to prevent the repair of a car supplied by BL and requiring the inevitabie replacement of a component part.
As to the first argument Armstrong point out that the Patents Act 1977 confers a right on the inventor of a novel product by the grant of a patent which prevents anyone making the product without the licence of the inventor for a period of 20 years. The Registered Designs Act 1949 confers a right on a designer of a novel design by the grant of design copyright which prevents anyone making any article in respect of which the design is registered without the licence of the designer for a period of 15 years. The Copyright Act 1956 confers a right on the author of an original artistic work by the grant of copyright which prevents anyone reproducing the work without the licence of the author during his life and 50 years thereafter. There is no general provision that all skill and labour shall be protected, rewarded and encouraged by the grant of a total or partial monopoly which prevents anyone making or reproducing an article which is the product of skill and labour. The invention and design of an article may involve vast expense, thought and money but if the product is not patentable, does not incorporate a registered design and is not an artistic work then there is no restriction on the making or reproduction of the product. BL's exhaust pipes are not entitled to protection because they are not patentable, not registrable and they are not artistic works.
BL's engineering drawings are artistic works but they are only original in so far as they represent the skill and labour of the draughtsman. The shape, configuration, dimensions and exact measurements of the exhaust pipe were contributed by the skill and labour of the design engineer not by the draughtsman. By directly copying the exhaust pipe Armstrong make use of the work of the design engineer but do not make use of the work of the author of the drawing. BL's exhaust pipe could have been made without BL's drawing. Armstrong's exhaust pipe was made without BL's drawing. BL's object in these proceedings is not to prevent reproduction of the drawing which is protected by copyright but to prevent reproduction of the exhaust pipe which is not entitled to any protection whatsoever.
An article embodying an invention which is not patented does not enjoy the 20 years restriction on use of the invention afforded by patent law. An article embodying a design which is not registrable does not attract the 15 years restriction on reproduction afforded by design copyright. An article which is not an artistic work does not attract the life plus 50 years restriction on reproduction afforded by copyright law to artistic works. But if BL are right, an article which is not patented, not registered and is not an artistic work acquires the life plus 50 years restriction on reproduction afforded by copyright to an artistic work.
BL contend in the first place that it is not necessary for Armstrong to copy BL's exhaust pipe. BL say that Armstrong can avert their gaze from BL's exhaust pipe and design their own. Even so, Armstrong could be accused of copying since Armstrong cannot begin without a Marina. The trial judge Foster J. said [1982] F.S.R. 481, 487 that:
"There was much debate by different witnesses whether it would be possible to design a new exhaust system for a BL car and on the evidence it is clear that a new exhaust system which would not infringe is possible, but no manufacturer would do so for one overriding consideration. That is that a manufacturer might want to make modifications to a vehicle such as moving the gear change or the petrol tank or the spare wheel, and it would take pains, if it is possible, not to interfere with the existing exhaust system. In addition, the system may be two or three parts and, as all systems must, of course, fit the manifold and the fixing points on the underbody, it must also be made so that each part will fit the other parts, so that the motorist need not purchase the whole of the exhaust system if one part is the only one requiring replacement."
In argument BL conceded that there were many component parts, such as windscreens, which it was not possible to make without copying the original. In practical terms, Armstrong must either copy or go out of business.
In the second place, BL deny that they are claiming a monopoly in the reproduction of BL's exhaust pipe. Anyone is free to copy BL's exhaust pipe because BL are prepared to license the reproduction of BL's exhaust pipe on payment of a royalty described as modest. The driver of a Marina will suffer no inconvenience because he will be able to obtain a replacement exhaust pipe as required either from BL or from BL's licensees. But a monopoly re mains a monopoly even if it be benevolently administered and an established monopoly will not necessarily be administered with benevolence. In practice BL are claiming a monopoly and a similar monopoly can be claimed by other manufacturers for their models. The same monopoly could be invoked by the manufacture of any article which requires replacement parts from time to time.
In the course of the present appeal some argument was understandably devoted to a justification of the monopoly claimed by BL. It was urged that BL are entitled to charge a royalty for licensing the production of component parts so as to spread the burden of the expenditure by BL on the research and development of the Marina; that a royalty charged by BL on replacement parts enables BL to reduce the price of their cars; that unless BL have a monopoly there will be no obligation on BL or on any other manufacturer of replacement parts to ensure that such parts are available for motorists throughout the lives of their vehicles; that without BL's monopoly there will be cheap imports from the Far East and the safety standards and quality of replacement parts cannot be safeguarded. The advantage to BL of being able to supply spare parts for Ford and other vehicles in the absence of monopoly was not explored.
Armstrong sought to counteract these arguments by extolling the virtues of competition and by asserting that the interests of the public are not to be safeguarded by monopolists.
For my part, I agree with the submissions made on behalf of Armstrong that Parliament did not intend the protection afforded by copyright to a drawing should be capable of exploitation so as to prevent the reproduction of a functional object depicted in a drawing. But there is a good deal of legislative and judicial history to be considered.
Section 1 of the Statute of Monopolies 1623 (21 Ja.I c. 3) contains an emphatic declaration that all monopolies:
". . . for the sole buying, selling, making, working or using of anything within this realm, ... are altogether contrary to the laws of this realm and so are and shall be utterly void and of none effect. . ."
To this declaration there was, however, a proviso in section 6 whereby the declaration against monopolies:
". . . shall not extend to any letters patents and grants of privilege for the term of 14 years or under, hereafter be made of the sole working or making of any manner of new manufactures within this realm, to the true and first inventor and inventors of such manufactures ... so as also they be not contrary to the law, nor mischievous to the state, by raising prices of commodities at home, or hurt of trade, or generally inconvenient. . . "
In the 18th century various Acts were passed which forbade the copying of books and engravings without the consent of the author and which gave a measure of protection to novel designs.
By the Copyright Act 1342 (5 & 6 Vict. c. 100) copyright was defined as meaning "the sole and exclusive liberty of printing or otherwise multiplying copies" of any book including every volume, pamphlet, sheet of music, map, chart or plan separately published. By the Act copyright in every book was conferred for the natural life of the author and seven years after his death with a minimum period of 42 years from publication.
In Davis v. Comitti (1885) 52 L.T. (N.S.) 539 the manufacturer of a barometer claimed to restrain the sale of a rival barometer on the grounds that the rival barometer infringed his copyright under the Copyright Act 1842 in the printed face of the barometer which was registered as a book or chart. Chitty J. rejected the claim on the grounds that the barometer face was not a book in itself, and was only a necessary part of the barometer. He said at p. 540:
"The invention of an inventor and the literary work (which in a wide sense may be regarded as inventions) of an author are regarded in the statute law as distinct things, and as carrying when they are protected distinct rights for different periods of time. It would be strange if the inventor, who, by means of a patent could obtain a monopoly for his invention for the term of 14 years, was enabled to obtain a distinct right of copyright for a period of at least 42 years for the letterpress on the dial, or some other essential part of his invention, and thus, after the expiration of the period for which his patent was granted, be in a position to restrain the serviceable user of some letterpress which formed an essential part of his invention. In my opinion the statutes do not lead to any such anomaly."
By the Patents, Designs and Trademarks Act 1883 the proprietor of a registered design was given the exclusive right to control the use of an original
"design applicable to any article of manufacture, or to any substance artificial or natural, or partly artificial and partly natural, whether the design is applicable for the pattern or for the shape or configuration, or for the ornament thereof.": sections 58 and 60.
In Moody v. Tree (1892) 9 R.P.C. 233 there was registered a picture of a basket claimed as a design for "the pattern of the basket, consisting in the osiers being worked in singly and all the butt ends being outside." Pollock B. and Vaughan Williams J. held that the design should not have been registered because the claim was in reality a process or mode of manufacture and not a design which must be something appealing to the eye and to the eye separate from the object for which it was applied. Pollock B. said at p. 235 in relation to a design
"you must use your eye and say, looking at the figure or the design, whether it is new or it is not, and beyond that you cannot go."
Vaughan Williams J. at p. 236 said
"... a mere mode of manufacture is not a design at all. It is not something which is capable of existence as a pattern, or as a shape or configuration, or as a piece of ornamentation to be applied to an article or class of articles . . ."
The Patents and Designs Act 1907 consolidated the enactments relating to patents for inventions and the registration of designs. The period of patent protection was fixed at 16 years. The period of protection for registered designs was then and thereafter limited to 15 years.
Until after the turn of the century copyright in the drawing of an exhaust pipe would not have been infringed by a reproduction of the exhaust pipe. BL's exhaust pipe would not have been registrable as a design before the turn of the century and never became registrable thereafter as a design for it lacks novelty and is a mere mechanical device dictated by the function which the exhaust pipe must perform. BL's exhaust pipe corresponds to the electrical terminal which in Amp Inc. v. Utilux Pty. Ltd. [1972] R.P.C. 103 this House held not to be registrable because the features of the design were dictated solely by function.
The Copyright Act 1911 introduced changes into the law of copyright. By section 1(2) copyright was conferred on every original literary, dramatic, musical and artistic work. Copyright was defined by section 1(2) as:
"the sole right to produce or reproduce the work or any substantial part thereof in any material form whatsoever, . . ."
The period of copyright was retained at the life of the author plus 50 years.
By section 35 an artistic work was defined as including:
"works of painting, drawing, sculpture and artistic craftsmanship, and architectural works of art and engravings and photographs."
Overlap between copyright and design copyright was sought to be avoided by section 22 which directed that:
"(1) This Act shall not apply to designs capable of being registered under the Patents and Designs Act, 1907, except designs which, though capable of being so registered are not used or intended to be used as models or patterns to be multiplied by any industrial process."
In King Features Syndicate Inc. v. O & M Kleeman Ltd. [1941] A.C. 417 ("the Popeye case") this House held that the copyright in a Popeye cartoon was infringed by the defendant who, without the licence of the author of the cartoon reproduced a Popeye brooch and doll which had been licensed by the author. Viscount Maugham at p. 427 said:
"... an industrial object, whether in two or three dimensions, may well be an infringement of the artistic copyright in the preliminary drawings or prints made by the author or in the design registered under. . . the Act of 1907. It is not, in my opinion, open to doubt that the main object of section 22 was to prevent such a result, and to leave the author of a design capable of registration, if he intended to use it industrially, with no more than the rights which the Act of 1907 gave him."
This House held that section 22 of the Copyright Act 1911 did not operate to bring to an end the copyright in the Popeye cartoon because Popeye was not intended to be used industrially when the cartoon was first drawn. However, in the Popeye case the infringing three-dimensional brooch and doll appropriated the skill and labour of the author of the original cartoon character. Different considerations arise, when, as in the case of an exhaust pipe, the three-dimensional reproduction owes everything to the inventor and designer of the exhaust pipe and nothing to the original skill and labour of the draughtsman. In the Popeye case a copier who made a Popeye brooch by copying a Popeye brooch must have known that there was either in existence a prototype Popeye brooch which was or might be an artistic work or a Popeye drawing or cartoon which was an artistic work. The copier knew that he was infringing copyright either directly or indirectly. In the present case, a copier who makes an exhaust pipe by copying an exhaust pipe knows that he is not directly copying an artistic work. If there is only a prototype exhaust pipe or a literary explanation and written dimensions of the exhaust pipe there is not even any indirect copying. A copier only knows of the existence of an antecedent drawing because BL have been careful to obtain copyright in such a drawing and reveal the existence of the drawing. So although the decision in the Popeye case showed that section 22 was not fully effective to separate copyright and copyright design, the decision did not extend the ambit of copyright to indirect reproduction of a drawing of a purely functional object.
Registered designs are now protected under the Registered Designs Act 1949.
Copyright law was further amended by the Copyright Act 1956. The precursor to that Act was a report (Report of the Copyright Committee (1952) (Cmnd. 8662)) known as the Gregory Report of the committee established by the government to consider copyright law. Amongst the problems considered by the Gregory Committee were the possible repercussions and extensions of the Popeye case and of the case of Chabot v. Davies [1936] 3 All E.R. 221 where the copyright in an architect's elevation representing a shop front was held to be infringed by the erection of the shop since this was regarded as a reproduction of the elevation "in a material form." The Gregory Report continued in paragraph 258:
"We do not dissent from such an application of copyright protection, provided the test is whether the building or other reproduction can be recognised visually by an ordinary man as being, in fact, a reproduction, even if in another material or on a different scale to what has been drawn. It should not be an infringement of the copyright in the drawing to erect a building or to construct an article based thereon if the result has no clearly visual resemblance to the drawing. Thus, we consider that a limitation (additional to any imposed according to our recommendations in respect of section 22) is desirable in the protection to be given to a drawing by reason of its reproduction as a building, machine or utilitarian article; otherwise the scope of the Copyright Act would again be extended into fields far beyond its main or original intent and properly to be covered by other forms of protections if at all. We have noted that in the case of industrial designs registered under the Registered Designs Act 1949, the protection is limited to
'features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged solely by the eye, but does not include a method or principle of construction, or features of shape or configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform'. (Section 1(3)).
It, should not be possible to protect under the Copyright Act more in the constructional or functional field than is protectable under the Registered Designs Act. Again, we have noted that the protection in the Copyright Act of 'architectural works of art' is 'confined to the artistic character and design and shall not extend to processes or methods of construction.' In a similar way, therefore, we recommend that the protection given by the Copyright Act to drawings in respect of a three-dimensional reproduction as articles should be confined to the appearance of the fully-finished article as seen by an uninstructed eye."
[I have underlined the mischiefs which the Gregory Committee proposed to eliminate in recommending legislation.]
As regards section 22 of the Copyright Act 1911, the Gregory Committee recommended in paragraph 250 of its report that copyright protection should cease to extend to indirect copying of a registrable design if and when the author registered the design or applied the design himself industrially without registration.
Section 9(8) of the Copyright Act 1956 gave effect to the recommendations of the Gregory Committee in paragraph 258 of the Report and section 10 of the Copyright Act 1956 gave effect to the recommendations of the Gregory Committee in paragraph 250 of their Report.
Section 9(8) of the Copyright Act 1956 is in these terms:
"The making of an object of any description which is in three dimensions shall not be taken to infringe the copyright in an artistic work in two dimensions, if the object would not appear, to persons who are not experts in relation to objects of that description, to be a reproduction of the artistic work."
Unfortunately it is not possible to construe this subsection as if the word "an" were substituted for the word "the" in the last line.
The recommendations of the Gregory Report and the provisions of section 9(8) of the Copyright Act 1956 were not sufficient to carry out the intention that it should not be possible to protect under the Copyright Act more in the constructional or functional field than is protectable under the Registered Designs Act 1949. In the result section 9(8) has had very little application.
In Dorling v. Honnor Marine Ltd. [1965] Ch. 1 the plaintiffs claimed copyright in plans for the construction of a dinghy and for parts of the dinghy. After citing section 9(8) of the Copyright Act 1956 Danckwerts L.J. said at p. 21:
"It may be that the section was intended to prevent claims of infringement except in obvious cases. But the subsection presents the court with a very difficult, if not impossible, task. The courts are well used to matters depending on the evidence of experts, whose opinion can thus be readily obtained, even if they are not often in agreement. But how is the impact of the appearance of an object on a nonexpert (perhaps 'the man on the Clapham 'bus') to be ascertained? . . . The judge, who said that he knew nothing whatever about boats or plans of boats, appears to have considered that he was, therefore, a qualified non-expert for the purposes of section 9(8). The conclusion to which he came was 'that some of the parts - sufficient together to constitute a substantial part of the whole boat - would have appeared to a non-expert, who did not know that they were in fact based on the plans, to be reproductions of the corresponding drawings on the plans, but that he would not have felt any strong conviction that the completed boat was a three-dimensional version of the plans.' I am in a somewhat more difficult position than the judge because I am used to reading plans for the purpose of making models. But, applying my mind to the problem as best I can, I agree with the judge's conclusion as regards the parts. As regards the completed boat, I should have thought that a non-expert would have recognised it as the boat shown in the plans . . ."
In Porting v Honnor Marine Ltd. [1965] Ch.l and in ail cases since 1956 the courts assumed rather than decided that indirect reproduction of drawings of functional articles were affected by the decision in the Popeye case.
In Merchant-Adventurers Ltd. v. M. Grew & Co. Ltd. [1972] Ch. 242 Graham J. held that copyright in engineering drawings of electric light fittings was infringed by the defendant who copied the plaintiff's electric light fittings. As to section 9(8) Graham J. at p. 251 referred to the "extraordinary provision in the Copyright Act 1956" and contained in section 9(8) and concluded at p. 255:
"There is infringement of drawings by three-dimensional reproduction of those drawings if they are sufficiently clear for a man of reasonable and average intelligence to be able to understand them and from an inspection of them to be able to visualise in his mind what a three-dimensional object if made from them would look like."
He held that the man of reasonable and average intelligence was able to visualise the appearance of the electric light fittings from the engineering drawings.
In George Hensher Ltd. v. Restawile Upholstery (Lanes.) Ltd [1976] A.C. 64 a suite of chairs and a settee were held not to be a "work of artistic craftsmanship" and therefore not entitled to copyright protection. The suite was manufactured from a prototype or mock-up and not from drawings. If the suite had instead been manufactured from a drawing it could have been argued that copyright in the drawing had been infringed.
Finally, in L.B. (Plastics) Ltd. v. Swish Products Ltd. [1979] R.P.C. 551 the plaintiffs designed and manufactured a plastic knock down drawer system of furniture known as the Sheer glide in accordance with production drawings which depicted the Sheer glide drawers. The defendants copied the Sheer glide drawers in producing their own versions called the Swish design. The plaintiffs sued for breach of copyright of their production drawings. The plaintiffs' claim was upheld in this House. At p. 573 Whitford J., the trial judge, referred to section 9(8) as "that most difficult of provisions" and said:
". . It must be necessary for me to effect a comparison between a drawer or part of a drawer and the drawing. I cannot pretend to be a total non-expert in the reading of drawings, though I can do the best I can to shed such expertise as I may have."
He concluded that section 9(8) did not afford a defence. This House came to the same conclusion. Lord Wilberforce said at p. 622 that section 9(8):
". . . Introduces, in the context of reproduction in another dimension, a test which may be described as a test of lay recognition - one well known and applied in many different contexts in American law - for example in relation to dolls or toys made after comic strip characters, or in relation to musical reproductions. It inevitably gives rise to difficulties as to the nature of the evidence which may be received, and as to the degree of non-expertise to be attributed to the judge ... In performing this task the judge must also be credited with some ability to interpret design drawings: the subsection does not say the contrary, and without it the comparison could not be made."
Lord Hailsham of St. Marylebone said at p. 630 that he was
"as puzzled as other judges have been by the concept of the notional non-expert. . . and by the policy underlying the subsection which, I am told, is inspired by section 258 of the Gregory Report."
Lord Salmon at p. 636 expressed doubt whether expert evidence should have been adduced to enable the judge to consider a defence under section 9(8). He continued:
"... If evidence is to be called, it conjures up rather a bizarre picture of witnesses being called on one side and the other who state that they have no experience or knowledge of the subject in question nor possibly of working drawings, and then go on to state whether it does or does not appear to them that the three-dimensional object was reproduced from the two-dimensional drawing. It would be well-nigh impossible to assess the value of such evidence. For my part, I am a prototype of a non-expert in 'knock down' drawers and for that matter, in working drawings. I do not think however, that if I had examined the Swish drawer and the . . . drawings which must include, as Whitford J. points out, everything written upon it, I should have had any real difficulty in coming to the clear conclusion that the drawers had been reproduced from the drawing or a substantial part of it."
The decision of this House in L.B. (Plastics) Ltd. v. Swish Products Ltd. [1979] R.P.C. 551 shows clearly that as the law now stands the first argument put forward by Armstrong namely that copyright does not apply to prevent the indirect copying of drawings of functional articles cannot be sustained. That argument was raised, though in an oblique form, in L.B (Plastics) Ltd. v. Swish Products Ltd. [1979] R.P.C. 551 and was disposed of by Lord Hailsham of St. Marylebone at p. 631 where he said this:
"The argument was that although it be conceded that the appellants' draughtsman's drawings were copyright artistic works within section 3, the information acquired by preliminary work going into the drawing was not, and that what was copyright was simply the particular sketch by the particular draughtsman, which was not reproduced in the three-dimensional product. It would follow of course that a three-dimensional moulding of the present sort could not easily infringe the copyright in a drawing of this sort at all and that a two-dimensional drawing would not do so if drawn as a different sketch. The advantage claimed for counsel's argument is that it reduces the danger of the consequences of the overlap between the law relating to registered design and patent and that relating to copyright which has long given trouble to lawyers and legislators. But we must take copyright law as we find it."
Section 10 of the Copyright Act 1956 was amended by the Designs Copyright Act 1968 enacted on the initiative of a private member of the House of Commons prompted by a group of Birmingham jewellers. The amendment recognised the overlapping of copyright law and design copyright by limiting the copyright in a drawing of a design which is applied industrially to the period of 15 years applicable to design copyright. In the present proceedings the Court of Appeal, Oliver L.J. overruling Whitford J. in Hoover Plc v. George Hulme (Stockport) Ltd. [1982] F.S.R. 565 held at [1984] F.S.R 591, 624 that designs which could not be registered under the Registered Designs Act 1949 are not affected by section 10 of the Copyright Act 1956 as amended and enjoy copyright protection for the full term of the life of the author plus 50 years.
Thus section 9(8) of the Copyright Act 1956 was defective to achieve the intended purpose of preventing the extension of the scope of copyright "into fields far beyond its main or original intent and properly to be covered by other forms of protection if at all" by making it impossible "to protect under the Copyright Act more in the constructional or functional field than is protectable under the Registered Designs Act": Gregory Report, paragraph 258. In the result the owner of copyright in a simple drawing of a simple object who proves that the object has been copied is awarded an injunction and damages; but the owner of copyright in a complicated drawing of a sophisticated object who also proves that the object has been copied will be dismissed with costs if the hypothetical non-expert would not recognise the copying when he saw it. I reluctantly echo the comment of my noble and learned friend Lord Hailsham of St. Marylebone in L.B. (Plastics) Ltd. v. Swish Products Ltd. [1979] R.P.C. 551, 631 that "we must take copyright law as we find it."
I turn, therefore, to the alternative submission on behalf of Armstrong. It is said that BL by choosing to manufacture a car by reference to engineering drawings and by marketing the car as a means of transport which can only be kept in running order by repairs which involve indirect reproduction of those engineering drawings cannot assert their copyright so as to prevent repairs being carried out. Put shortly, a vendor cannot deprive a purchaser of the right to repair.
This submission unlike the first submission has not been the subject of legislation is not contrary to settled practice but on the contrary is supported by favourable indications in analogous authorities.
We were not referred to any legislation which affects the submission based on the right to repair. As to the practice, the claim to extend copyright to prevent the replacement of exhaust systems by way of repair has been pioneered by BL. Mass production of vehicles and other machinery began about the turn of the century and was extensively practised by Ford shortly after the First World War. A demand for spare parts came into existence not later than the day when the first model T Ford broke down on the highway and since that day there has been established a network of manufacturers of spare parts offering facilities to motorists for the replacement of exhaust pipes and systems and windscreens and other components. BL themselves, formerly copied and supplied replacement component parts for cars of rival manufacturers but now only make parts for the cars of other manufacturers if BL consider they can do so without copying. I am not clear how BL avoid copying or whether their activities have been challenged. The origin of the present dispute between BL and Armstrong was chronicled in these proceedings by the trial judge Foster J. in [1982] F.S.R. 481, 485 where he said:
"In February 1970 BL set up a new division to deal not only with patents and trademarks but also copyright. It was, for its first 10 years, headed by Mr. A.G.H. Barrington, who not only holds university degrees in physics and law but also became a chartered patent agent in 1964. Before this division was set up each make of car in BL employed its own patent agents - some 16 or 17 agents. Mr. Barrington's division only had some eight or ten persons in it and of those only three in addition to Mr. Barrington had any professional qualifications. He found that it was not possible to investigate more than one manufacturer at a time and he chose first Quinton Hazell because it was the biggest manufacturer of replacement parts for BL cars (though only fourth in the table for exhaust system). He knew the legal position before the Designs Copyright Act 1968 was passed and was aware of its effect. In January 1973 there were announcements in the Times of an action by A.P. v. Quinton Hazell in respect of clutches, and in October of that year the action was settled on terms which it was thought were favourable to A.P,, the copyright owner. In November 1973 Mr, Barrington at last got permission from the Chairman of BL, then Lord Stokes, to proceed with claims for breach of copyright in exhaust systems, and in December 1973 he wrote to Quinton Hazell making claims for infringement of copyright in exhaust systems, . . . which ultimately resulted in the licence agreements mentioned."
Licence agreements had been mentioned by the judge in an earlier passage at p. 485 in these terms;
"Over 90 per cent of the market shares in exhaust systems are held by seven companies. The figures show that the percentage of the seven from 1975 to 1981 have changed very little, even when licensing agreements have been concluded with BL. In 1981 Tube Investments ("T.I.") was first with 26 per cent followed by Unipart with 24 per cent, Harmo with 17 per cent, Quinton Hazell with 14 per cent, Armstrong with 7 per cent, Burgess with 3 per cent, and A.P. with 1 per cent. Licence agreements have been concluded with Quinton Hazell on 22 May 1975 and again on 11 July 1980, with A.P. on the 24 June 1977, with Burgess on 3 April 1978 and with Harmo on 20 December 1979. An action has been started by BL against T.I. . . but the present action is the first action to come to trial."
It is not surprising that some component manufacturers complied with BL's demands for a licensing agreement. T.I. and Armstrong have chosen to resist and the cost of these present proceedings must I apprehend exceed one million pounds. Ford have asserted copyright in their replacement parts and have adopted a policy of not granting any licences to manufacture or sell, thus asserting a monopoly which has been stigmatised by the Monopolies and Mergers Commission as an anti-competitive practice which tends to keep prices up. No doubt if BL are successful in these proceedings, every manufacturer, whether of motor vehicles or other articles, will be careful to make and preserve production or engineering drawings and will either require all component replacement parts to be purchased from the original manufacturer or from licensees who pay royalties to the original manufacturer.
As between landlord and tenant and as between the vendor and purchaser of land, the law has long recognised that "a grantor having given a thing with one hand is not to take away the means of enjoying it with the other" per Bowen L.J. in Birmingham, Dudley and District Banking Co. v. Ross (1888) 38 Ch. D. 295 at 313.
In Browne v. Flower [1911] 1 Ch 219, 225 Parker J. said that:
"... The implications usually explained by the maxim that no one can derogate from his own grant do not stop short with easements. Under certain circumstances there will be implied on the part of the grantor or lessor obligations which restrict the user of the land retained by him further than can be explained by the implication of any easement known to the law. Thus, if the grant or demise be made for a particular purpose, the grantor or lessor comes under an obligation not to use the land retained by him in such a way as to render the land granted or demised unfit or materially less fit for the particular purpose for which the grant or demise was made."
These principles were followed in Harmer v. Jumbil (Nigeria) Tin Areas Ltd. [1921] 1 Ch. 200, O'Cedar.Ltd. v. Slough Trading Co. Ltd [1927] 2 K.B. 123, Matania v. The National Provincial Bank Ltd. [1936] 2 All E.R. 633 and Ward v. Kirkland [1967] Ch 194.
I see no reason why the principle that a grantor will not be allowed to derogate from his grant by using property retained by him in such a way as to render property granted by him unfit or materially unfit for the purpose for which the grant was made should not apply to the sale of a car. In relation to land, the principle has been said to apply
"beyond cases in which the purpose of the grant is frustrated to cases in which that purpose can still be achieved albeit at a greater expense or with less convenience";
per Branson J. in O'Cedar Ltd. v. Slough Trading Co. Ltd. [1927] 2 K.B. 123 at 127. The principle applied to a motor car manufactured in accordance with engineering drawings and sold with components which are bound to fail during the life of the car prohibits the copyright owner of the drawings from exercising his copyright powers in such a way as to prevent the car from functioning unless the owner of the car buys replacement parts from the copyright owner or his licensee.
BL own the car and the copyright in a drawing of an exhaust pipe fitted to the car. BL sell the car and retain the copyright. The exercise by BL of their copyright in the drawing will render the car unfit for the purpose for which the car is held. BL cannot exercise their copyright so as to prevent the car being repaired by replacement of the exhaust pipe.
A purchaser of a patented article may carry out repairs to it without being held liable for infringement. On the other hand he cannot manufacture a new article which infringes the patent and claim that he has not infringed merely because in the manufacture he has used parts derived from a patented article sold by the patentee; see Dunlop Pneumatic Tyre Co. Ltd. v. Neal [1899] 1 Ch 807 and Dunlop Pneumatic Tyre Co. Ltd. v. Holborn Tyre Co. Ltd. (1901) 18 R.P.C. 209. In Sirdar Rubber Co. Ltd. v. Wellington Weston & Co. (1905) 22 R.P.C. 257 there was a compound patent of a metal wheel rim of a particular shape to receive a rubber tyre. Swinfen-Eady J. said at p. 266:
"Unless the purchaser is able to have new rubbers placed in the rim, he cannot obtain the use of the patented article for the fair period of its life. This is not a repair amounting to reconstruction, and a new article, but a fair repair; the old metal rim, the distinguishing feature of the invention, being retained, not colourably, but because essential and practically as good as new, and a fresh rubber put to replace the old worn out one."
On appeal to this House reported in (1907) 24 R.P.C. 539 Lord Haisbury said at p. 543:
"The principle is quite clear although its application is sometimes difficult; you may prolong the life of a licensed article but you must not make a new one under the cover of repair."
In Dunlop Pneumatic Tyre Co. Ltd. v. David Moselev & Sons Ltd. [1905] 1 Ch. 572 the Court of Appeal held that the manufacture and sale of a tyre to be used to infringe a combination patent for a tyre and rim for cycle and other vehicle wheels was not itself an infringement of the patent. Having so found Cozens-Hardy L.J. said at p. 621:
"... I think, speaking for myself, that there may be a third class of cases in which the supply by the defendants might be perfectly lawful - I mean for the purpose of repair. The word "repair" is no doubt a difficult one to construe, but I do not think that Dunlop Pneumatic Tyre Co. v. Neal [1899] 1 Ch 807 justifies the construction which was put upon it by the appellants' counsel. I certainly doubt - I will not say anymore than that - whether the holder of a licensed tyre may not replace a worn out cover without being guilty of an infringement of the patent. It is not necessary to decide that point now, and I only desire to keep that point open for future consideration"
In Solar Thomson Engineering Co. Ltd. v. Barton [1977] R.P.C. 537 the plaintiffs sold a conveyer system which included patented pulley wheels having elastomeric rings in peripheral grooves. The plaintiffs' articles, including the rings were made in accordance with their production drawings in which they claimed copyright. A purchaser of the conveyer system from the plaintiffs instructed repairers to make and fit new steel rings and the plaintiffs then sued the repairers for infringement of patent and infringement of copyright. The Court of Appeal held that there was an implied licence under the patent to repair the pulleys by replacing worn rings and implied licence under the plaintiffs' copyright in their drawings to the extent necessary to enable such repairs to be carried out. At p. 560 Buckley L.J. said:
"If I am right in the view I have expressed about the existence here of an implied licence under the patent to repair pulleys by replacing worn rubber rings, it must, I think, follow that purchasers of Polyrim pulleys are also impliedly licensed to infringe the plaintiffs' copyright in their drawings to the extent necessary to enable such repairs to be carried out. To hold otherwise would, be to allow the copyright to stultify the implied licence under the patent."
In the course of the present proceedings Oliver L.J. said in the Court of Appeal [1984] F.S.R. 591, 611:
"It is, in fact, unnecessary to decide the point, but I can see that there are strong arguments for saying that where a manufacturer sells to a purchaser an expensive piece of machinery containing parts which are inherently likely to wear out during the working lifetime of the machine, he impliedly licenses the purchaser to procure, by copying if it is more advantageous to him, those subsidiary parts, even in a case where the manufacturer is itself willing to supply the parts at whatever it regards as an appropriate price. If such a licence can be implied, there can be no reason for inhibiting the purchaser, when he orders one replacement, from having two or more made against future breakdown during the anticipated life of the machine. But even allowing that such manufacture might be within the implied licence, I find myself quite unable to see how that could constitute some sort of blanket licence from the vehicle manufacturer to any member of the public to copy and manufacture, for sale in the market generally and without specific order, equipment to be made available for purchasers or users of the vehicle manufacturer's products,"
For my part, t base the right to repair on the principle of non derogation from grant rather than implied licence and I see no difficulty in concluding that suppliers such as Armstrong may make exhaust pipes to be supplied to those cars of BL which require to be repaired by the replacement of exhaust pipes. Every owner of a car has the right to repair it. That right would be useless if suppliers of spare parts were not entitled to anticipate the need for repair. The right cannot, in my view, be withheld by the manufacturer of the car by contract with the first purchaser and cannot be withheld from any subsequent owner. It was suggested on behalf of BL that any such right would only be effective against the manufacturer of the car and not against a subcontractor who manufactured parts for the car and was allowed by BL to retain copyright in the engineering drawings. In my view, the same principle applies to a sub-contractor because he knows that he is manufacturing a part of a car to be sold to a purchaser who will need to keep the car in repair. It was also suggested on behalf of BL that if a patentee of a component part, such as a carburettor can prevent the installation of a replacement carburettor which infringes his patent, it follows that a copyright owner can prevent the installation of a replacement exhaust pipe which indirectly reproduces and infringes the drawing of an exhaust pipe.
There are substantial differences between patent law and copyright law in relation to repairs. First, a patent for an invention is only infringed, for present purposes, where the invention is a product, by a person who "makes" or "uses" the product without the consent of the proprietor of the patent. Where therefore a patented product is sold for use with the consent of the proprietor, repair of the patented product will not constitute an infringement; repair amounting to reconstruction will constitute the manufacture of a new and infringing product. A reproduction of an artistic work or a substantial part of an artistic work will constitute an infringement of copyright. In Solar Thomson Engineering Co. Ltd. v. Barton [1977] R.P.C. 537 the plaintiffs' patent was not infringed by repair but in carrying out that repair the defendants were held to have reproduced a substantial part of the plaintiffs' production drawings and to have infringed copyright in the drawings. Nevertheless, the plaintiff was not allowed to enforce its copyright, otherwise as Buckley L.J. said at p. 561:
"If it were, any purchaser of a patented article might find himself deprived of his ostensible right to repair that article by the existence of a copyright of which he would probably be ignorant when he made the purchase."
In the second place, a patent is granted by statute in respect of a product. The copyright in a drawing of a functional article is infringed by a reproduction of that article. Nevertheless, copyright is granted by statute in respect of the drawing and not in respect of the article. There is, in my view, no inconsistency between, on the one hand, allowing patent rights to be exercised to prevent the reproduction of an article covered by the patent and, on the other hand, not allowing copyright to be exercised in derogation of grant to prevent the reproduction of an article which is not covered by the copyright. In the third place, BL market and sell a car as a form of transport which requires an exhaust pipe in order to function. BL are not selling exhaust pipes. The car sold by BL can only be kept in repair by the replacement of the exhaust pipe which is not the subject of a patent. In these circumstances, in my opinion, BL are not entitled to assert the copyright in their drawing of an exhaust pipe in order to defeat the right of the purchaser to repair his car. The exploitation of copyright law for purposes which were not intended has gone far enough. I see no reason to confer on a manufacturer the right in effect to dictate the terms on which an article sold by him is to be kept in repair and working order. Both the Court of Appeal and Foster J. might have been prepared to come to the same conclusion but balked at extending the rights of an owner of a car to keep it in repair to a manufacturer who makes parts solely for repair. I see no difficulty in such an extension; otherwise the right to repair would be useless.
For these reasons I would allow the appeal, discharge the injunctions granted by the Court of Appeal and dismiss BL's action with costs.
LORD GRIFFITHS
My Lords,
The importance of this appeal to manufacturing industry has been stressed in your Lordships' speeches and needs no further emphasis from me. British Leyland Motor Corporation Ltd. ("BL") claim that, through their copyright in the mechanical drawings or blueprints of the exhaust pipe of a Marina motor car, they are able to prevent any other manufacturer from copying the shape of that exhaust pipe without their permission. The validity of this claim depends in the first place upon the true construction of the Copyright Act 1956, under which BL claim copyright.
The relevant provisions of the Act are as follows;
"1(1) In this Act 'copyright' in relation to a work (except where the context otherwise requires) means the exclusive right, by virtue and subject to the provisions of this Act, to do, and to authorise other persons to do, certain acts in relation to that work in the United Kingdom or in any other country to which the relevant provision of this Act extends.
The said acts, in relation to a work of any description, are those acts which, in the relevant provision of this Act, are designated as the acts restricted by the copyright in a work of that description. (2) In accordance with the preceding subsection, but subject to the following provisions of this Act, the copyright in a work is infringed by any person who, not being the owner of the copyright, and without the licence of the owner thereof, does, or authorises another person to do, any of the said acts in relation to the work in the United Kingdom or in any other country to which the relevant provision of this Act extends.
"3(1) In this Act 'artistic work' means a work of any of the following descriptions, that is to says (a) the following, irrespective of artistic quality, namely paintings, sculptures, drawings, engravings and photographs; (b) works of architecture, being either buildings or models for buildings; (c) works of artistic craftsmanship, not falling within either of the preceding paragraphs,
"(5) The acts restricted by the copyright in an artistic work are (a) reproducing the work in any material form. . . .
"4(l) Subject to the provisions of this section, the author of a work shall be entitled to any copyright subsisting in the work by virtue of this Part of this Act. ... (4) Where, in a case not falling within either of the two last preceding subsections, a work is made in the course of the author's employment by another person under a contract of service or apprenticeship, that other person shall be entitled to any copyright subsisting in the work by virtue of this Part of this Act.
"48(1) In this Act, except in so far as the context otherwise requires, the following expressions have the meanings hereby assigned to them respectively, that is to say:
'drawing' includes any diagram, map, chart or plan;
'reproduction', in the case of a literary, dramatic or musical work, includes a reproduction in the form of a record or of a cinematograph film, and, in the case of an artistic work, includes a version produced by converting the work into a three-dimensional form, or, if it is in three dimensions, by converting it into a two-dimensional form, and references to reproducing a work shall be construed accordingly;
"49(1) Except in so far as the context otherwise requires, any reference in this Act to the doing of an act in relation to a work or other subject-matter shall be taken to include a reference to the doing of that act in relation to a substantial part thereof, and any reference to a reproduction, adaptation or copy of a work, or a record embodying a sound recording, shall be taken to include a reference to a reproduction, adaptation or copy of a substantial part of the work, or a record embodying a substantial part of the sound recording, as the case may be:
Provided that, for the purposes of the following provisions of this Act, namely subsections (1) and (2) of section two, subsections (2) and (3) of section three, subsections (2) and (3) of section 33, section 38 and subsections (2) to (4) of section 39, this subsection shall not affect the construction of any reference to the publication, or absence of publication, of a work."
It might at one stage in the history of artistic copyright have been possible to argue that Parliament only intended copyright to extend to paintings or drawings which could fairly be described as works of fine art; indeed, when Parliament first gave the protection of copyright to artists by the Fine Art Copyright Act 1862 (25 & 26 Vict, c.68) I believe that it was probably so limited. But, whatever may have been the position in the past, Parliament when it enacted the Copyright Act 1956 followed the advice of the Gregory Report (Report of the Copyright Committee (1952) (Cmnd. 8662)) and conferred copyright on any drawing irrespective of artistic quality and included in the definition of drawing any diagram, map, chart or plan. Thus, Parliament made clear, to my mind beyond argument, that the draughtsman is entitled to the copyright in every original mechanical drawing that he produces and if he does so in the course of his employment the copyright is that of his employer.
But what is the extent of the protection given by that copyright? Section 3(5) of the Act provides that the mechanical drawing may not be reproduced in any material form without the licence of the owner of the copyright. It is well established that reproduced means copied and a coincidental reproduction without copying is not a breach of copyright. Therefore, no-one without BL's permission may copy the mechanical drawings by tracing them, photographing them, or using them to make an identical drawing. Furthermore, no-one without BL's permission may use the drawing in order to make the exhaust pipe because section 48(1) provides that reproduction includes a version produced by converting the drawing into a three-dimensional form, so if the drawing is used in order to produce the exhaust pipe the copyright in the drawing is infringed.
Armstrong Patents Co. Ltd. ("Armstrong") have not infringed BL's copyright in any of these ways. Armstrong never saw BL's mechanical drawings and in any ordinary usage of the word "copy" they never copied the drawings. Armstrong made copies of the Marina exhaust pipe by copying the exhaust pipe itself through a process known as reverse engineering. Armstrong thus made no use of the product of the draughtsman's skill and labour, namely the mechanical drawings: but they did, of course, help themselves to the product of the skills of BL's engineering designers that had resulted in the original shape of the prototype exhaust pipe.
BL claim that in such circumstances "reproducing" or "copying" should be construed as bearing the extended meaning of "indirect copying." BL submit that if there exists a causal link between the artistic work and the three-dimensional copy there has been indirect copying of the artistic work and thus an infringement of copyright. As I shall show, there is a formidable body of authority to support this submission and I am satisfied that the Court of Appeal had no alternative but to hold that there had been indirect copying in this case that infringed the copyright in the drawings.
However, I am equally satisfied that it was not the intention of Parliament to bestow upon a manufacturer through the draughtsman in his drawing office protection for a purely functional object that could not be obtained through either patent or design copyright legislation.
BL could not have obtained patent protection for the exhaust pipe for it is neither new nor did it require any inventive step to produce it, nor could they have obtained design copyright protection as Parliament had made clear that design copyright was not to extend to protect objects such as exhaust pipes.
The Design Copyright Act 191-9 contains the following definition:
"1(3) In this Act the expression 'design' means features of shape, configuration, pattern or ornament applied to an article by an industrial process or means, being features which in the finished article appeal to and are judged solely by the eye, but does not include a method or principle of construction or features of shape or configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform."
The exhaust pipe is excluded from copyright design protection both because it has no appeal to the eye and because its shape is dictated solely by the function it has to perform, namely the efficient disposal of burnt gases in the Marina motor car.
If an exhaust pipe had qualified for design copyright protection the period of protection would have been limited to 15 years; even if it qualified for patent protection the protection is limited to 20 years, but if it is entitled to copyright protection through the mechanical drawing that protection may be as long as a 100 years or more i.e. the life of the draughtsman and 50 years after his death.
I find it inconceivable that Parliament, having explicitly denied the benefit of design copyright to a purely functional object such as an exhaust pipe, can have intended an effectively greater protection to be granted through an authors' artistic copyright. I am unimpressed by the argument that design copyright confers a true monopoly as defined by section 7(1) of the Act of 1949 whereas copyright only protects the copyright owner from reproduction by copying. This is, in my view, a distinction without a real difference because the chances of another manufacturer reproducing the identical or almost identical functional object without copying must be exceedingly remote and in the spare parts market virtually non-existent. I cannot regard this distinction between design copyright and artistic copyright as a sufficient reason to suppose that Parliament intended that artistic copyright should be available to protect the shape of an exhaust pipe.
If BL had made the exhaust pipe without producing a mechanical drawing either by directly copying their prototype exhaust pipe or by embodying the instructions to make the exhaust pipe in literary or numerate form as opposed to being contained in a mechanical drawing it is conceded that there would be nothing to prevent Armstrong copying the exhaust pipe by reverse engineering. But because BL have made it from an instruction in the form of a mechanical drawing it is said they have a monopoly in the shape of their exhaust pipe. I can see no sensible reason for such a distinction and it is another reason why I am convinced that it was never intended by Parliament.
But manufacturers and their lawyers have recently managed to persuade the courts to extend the protection of artistic copyright to protect the shapes of various types of purely functional objects. They have in effect achieved copyright in an exhaust pipe. This bizarre result is the consequence of the courts construing "reproducing" in section 3(5) as including "indirect copying" in circumstances where it is not necessary to do so to achieve the purpose of the Act which is to protect the commercial value of the artist's work and labour and not to grant a monopoly to a manufacturer. To construe copying as including "indirect copying" is to give an unnatural and extended meaning to the word "copying." It is justifiable to do so if it is necessary to achieve the purpose of the Act but it is not justifiable to do so to achieve a result which is manifestly not the purpose of the Act. This is what has happened in recent years and I must examine how it has come about.
The circumstances in which the concept of indirect copying was first introduced into artistic copyright fully justified its use for it was necessary to protect the value of the artists' work from piracy by means of copies of intermediate works. The first example is the decision of Blackburn J. in Ex Parte Beal (1868) L.R. 3 Q.B. 387, a decision under the Fine Arts Copyright Act 1862 (25 & 26 Vict. c. 68). Mr. Graves was the owner of the copyright in two oil paintings and a photograph: he had made engravings of these paintings and the photograph. Mr. Beal had sold photographs of the engravings which he had taken without the permission of Mr. Graves. It was held that Mr. Beal was rightly convicted of copying contrary to section 6 of the Act. Blackburn J. said at pp. 393-394:
"The copyright in the picture belongs to Mr. Graves; he made an engraving of it, of which he sold copies; he had not given any right to others to multiply them, and the photographs for which the penalties were recovered were made by photographing the engraving, and not the original picture, and it has been argued that the photograph of the engraving, being the reproduction of a copy of the design of the painting, is not a copy of the painting itself. It seems to me that cannot be so. When the subject of a picture is copied, it is of no consequence whether that is done directly from the picture itself or through intervening copies; if in the result that which is copied be an imitation of the picture, then it is immaterial whether that be arrived at directly or by intermediate steps."
Ex Parte Beal was cited with approval by Lindley L.J. in Hanfstaengl v. Empire Palace [1894] 3 Ch 109, 127:
". . . The judgment of Lord Blackburn in Ex Parte Beal L.R. 3 Q.B. 387, 394 shows that if a painting is in fact reproduced it is immaterial what the intermediate steps may be by which the reproduction is arrived at."
But in the same judgment he also said at p. 128:
"The protection of authors, whether of inventions, works of art, or of literary compositions, is the object to be attained by all patent and copyright laws. The Acts are to be construed with reference to this purpose. On the other hand, care must always be taken not to allow them to be made instruments of oppression and extortion."
In the same case Davey L.J. said at p. 133:
"The object of these Acts is both to protect the reputation of the artist from being lessened in the eyes of the world, and also to secure him the commercial value of his property - to encourage the arts by securing to the artist a monopoly in the sale of an object of attraction."
And Lopes L.J, said at p. 131:
"It is most material in the first place to consider the object to the Act of Parliament (25 & 26 Vict. c,68) which first gave copyright in paintings, drawings and photographs, and especially sections 1 and 2 of that Act, upon the true interpretation of which this case depends. The object of the statute was to protect property, to protect the artistic faculty in painting, drawing and photographing, and to prevent any interference by reproduction thereof with either the artist's reputation or the commercial value of his work. . . . There must be no such reproduction either mediately or immediately."
When the commercial value in a drawing lies in its aesthetic appeal, by which I mean its appeal to the senses, it can only be properly protected if copying or reproducing is extended to include indirect copying or reproducing. It is, therefore, readily understandable that the judges in the 19th century should have so construed the Fine Arts Copyright Act 1862. It is, however, to be remembered that those judges would not have considered that Armstrong had been guilty of "indirect copying" in this case because they did not regard the reproduction of a painting or drawing in a different medium to be an infringement of copyright. See Hanfstaengl v. Empire Palace [1894] 3 Ch. 1091 and Dicks v. Brooks (1880) 15 ChD 22.
After Parliament, by the Copyright Act 1911, had provided that copyright could be infringed by reproduction in "any material form whatsoever" the House of Lords in King Features Syndicate Inc. v. O. & M. Kleeman Ltd. [1941] A.C. 417 held that the copyright in a cartoon of "Popeye" was infringed by making unauthorised copies of "Popeye dolls" that had been licensed by the owner of the copyright in the cartoon. However, the mischief in pirating the "Popeye" cartoon by making copies of the "Popeye" dolls was the same mischief at which indirect copying had been aimed in the earlier cases. The copyist was stealing from the original artist the commercial value of "Popeye" which lay in the appeal to the public of this bizarre little figure that tickled the sense of humour and the ridiculous and which had been created by the artistic skills of the cartoonist. I do not regard this case as an authority for the proposition that the copying of a purely functional object whose shape owes nothing to the creative skill of the artist is necessarily a breach of copyright in the mechanical drawings from which the object was manufactured.
In Francis Day & Hunter Ltd. v. Bron [1963] Ch. 587 the owners of the copyright in a tune "A Little Spanish Town" claimed their copyright had been infringed by the composer of "Why." The case turned upon whether the defendant had unconsciously copied "A Little Spanish Town" - it was held that he had not. However, in the course of his judgment, Diplock L.J. said at pp. 623-624:
"But while the copyright work must be the source from which the infringing work is derived, it need not be the direct source: see Hansfstaengl v. Empire Palace Ltd. [1894] 2 Ch 1 Mr. Skone James, I think, put it with his usual accuracy when he said there must be a causal connection between the copyright work and the infringing work. To borrow an expression once fashionable in the law of negligence, the copyright work must be shown to be a causa sine qua non of the infringing work."
This passage is obiter because the case was not one in which indirect copying was alleged. I do not read it as intending to lay down that wherever there is a causal connection it follows that there has been indirect copying which infringes copyright but if it is intended to convey this meaning I cannot agree with it.
Indirect copying was taken a step further by Dankewerts L.J. in the final paragraph of his judgment in Dorling v. Honnor Marine Ltd. [1965] Ch.l. The facts of that case were that Mr. Dorling had designed a sailing dinghy, the Scorpion, and he granted a licence to Colonel Honnor to build Scorpions in accordance with his plans of the boat. Colonel Honnor formed a limited company to which he purported to assign the licence without Mr. Dorling's permission. The company then built and marketed the Scorpion in the form of a kit of parts that could be assembled by amateur yachtsmen. The company used Mr. Dorling's plans for the purpose of making the parts. A defence based upon the allegation that the parts were registrable under the Design Copyright Act 1949 and thus excluded from copyright protection by virtue of section 10 of the Copyright Act 1956 failed. Likewise, a defence based upon section 9(8) of the Act also failed, because a non-expert would have recognised the parts as made from the plans. It, therefore, followed that the company had infringed Mr. Dorling's copyright in the plans by making a three-dimensional representation of them in the form of the parts of the boat. But the company had also taken photographs of the parts made with the use of the plans and of the completed boat. These photographs were part of the instructions to enable the kit of parts to be assembled. Danckwerts L.J. held that these photographs infringed the copyright in the plans, he said at pp. 22-23:
"The parts and the completed boat are reproductions of the two-dimensional plans and the plans . . . thus having been converted into a three-dimensional form are reproduced by the photographs in a two-dimensional form. It is clearly a case of copying a copy of an artistic work protected by the Copyright Act 1956 and, therefore, an infringement of that copyright. It is well established that; "Copyright may be infringed by copying something which is itself a copy of the plaintiff's work. If the original work has been reproduced it is no answer to say that it has been copied from a work which was itself, whether licenced or unlicenced, a copy of the original": see Copinger and Scone James on Copyright, 9th ed. page 180".
This appears to me to be but a small extension of the concept of indirect copying. The commercial value of Mr. Dorling's plans lay in the fact that the kit of parts and the boat could be constructed from the plans. The company by copying the plans to produce the parts had stolen the value of Mr. Dorling's work and labour in producing the plans and the photographs were but part and parcel of that theft for they furthered its purpose by facilitating the construction of the boat.
The application of indirect copying to protect purely functional objects is of very recent origin and can be traced through a trilogy of cases from the Court of First Instance to the House of Lords. In British Northrop Ltd. v. Texteam Blackburn Ltd. [1974] R.P.C. 57 the plaintiffs were manufacturers of looms, the parts of which were made from mechanical drawings. The defendants copied certain parts of the plaintiffs' looms and marketed them as spare parts for the looms in competition with the spare parts manufactured by the plaintiffs. Megarry J. rejected an argument that no copyright existed in the plaintiffs' drawings on the ground that they were too simple to be original artistic works and held that, as copyright existed in the drawings, the defendants were in breach of copyright in that they had indirectly copied the drawings by copying the parts. In Solar Thomson Engineering Co. Ltd. v. Barton [1977] R.P.C. 537 the plaintiffs manufactured a pulley wheel with a replaceable lining described as an elastomeric ring. The Court of Appeal held that copyright existed in the plaintiffs' mechanical drawings and it was prima facie an infringement of that copyright to copy the elastomeric ring. Buckley L.J, said at p. 558-559:
"The defendant when commissioned by B.S.C. to repair worn rubber rings on polyrim pulley cheeks, provided his subcontractor with two cheek pieces received from B.5.C., one worn and one unworn. These were of Cable Belt Ltd.'s manufacture. The defendant did not provide his subcontractor with any drawings. He had not himself seen any drawings of the plaintiffs' Polyrim pulleys or of any part of them at that time, nor is there any evidence that the subcontractor had done so. I infer that the sub-contractor devised a mould by using which he could produce an exact copy of the plaintiffs' unworn rubber ring with which he had been supplied. If, as the evidence indicates to have been the case, the plaintiffs' rubber ring was made substantially in accordance with the sectional drawing mentioned earlier, the rubber ring moulded by the defendants' sub-contractor must have been substantially in accordance with the same drawing. It follows that it must have been a substantial reconstruction in three-dimensional form of the sectional drawing. This was not due to coincidence but to reproduction of a three-dimensional reproduction of the sectional drawing. There is a clear causal link at each step in the process. This must, in my judgment, have constituted an infringement of the plaintiffs' copyright in the sectional drawing unless either it is exempted by section 9(8) or was licensed."
However, the plaintiffs were refused relief on the ground that they had impliedly licensed the purchasers of their pulleys to infringe their copyright for the purpose of repairs.
In L.B. (Plastics) Ltd. v. Swish Products Ltd. [1979] R.P.C. 551 the plaintiffs were manufacturers of a plastic knock-down drawer system known as "Sheerglide." The trial judge held that the defendants had copied the shape of the plaintiffs' drawers and had, by indirect copying, infringed the plaintiffs' copyright in the mechanical drawings of the drawers. The Court of Appeal reversed the trial judge holding that it had not been established that the defendants had copied the drawers. The House of Lords restored the judgment of the trial judge holding that on the evidence copying had been established. The real battle between the parties in the litigation was a factual one - namely had there been copying or not. Lord Hailsham of St. Marylebone at the commencement of his speech said at p. 623:
". . . In my view, the questions at issue are mainly of fact."
and Lord Wilberforce said at p. 619:
"My Lords, though reference was made, quite properly, to authorities on copyright law, I do not think that the present case (apart from the defence based on section 9(8)) raises or involves any legal issue."
I, of course, accept that these cases are authority for the proposition that indirect copying of a purely functional object is an infringement of the copyright in the mechanical drawings, and as the Swish case [1979] R.P.C. 551, is a decision of this House it bound the Court of Appeal in the present case. However, nowhere in these cases can I find any consideration given to the reasons why indirect copying was originally introduced by the judges to extend the natural meaning of reproduce or copy or whether such reasons justify the extended meaning where the mechanical dawing is of a functional object and its only purpose is to provide an instruction for the production of the object. It appears that the courts have assumed that indirect copying must apply wherever there is a causal link between a drawing and the object it depicts unless copyright is denied to the drawing by the terms of section 9(8) of the Act.
I must now consider section 9(8) which provides:
"The making of an object of any description which is in three dimensions shall not be taken to infringe the copyright in an artistic work in two dimensions, if the object would not appear, to persons who are not experts in relation to objects of that description, to be a reproduction of the artistic work."
This section, as the Gregory Report shows, was introduced into the Act to prevent copyright spreading too far into the industrial field. Where it applies it denies all copyright to an artistic work. As the decisions have shown its application is very limited because most objects can be recognised from their drawings. However, it would no doubt apply to complex circuit diagrams. This section shows that Parliament had anxieties about the use of copyright in the industrial field but I am not prepared to interpret it as an indication that if its terms did not bite to prevent direct copying Parliament intended that the court should in all other circumstances extend copyright into the industrial field by the application of indirect copying.
Before I return to "indirect copying" I must also refer to section 10 of the Copyright Act 1956 and its amendment by the Design Copyright Act 1968. The object of section 10 was to prevent overlap between design copyright and artistic copyright. It has no relevance to a case such as this because design copyright does not apply to purely functional objects. However, in circumstances where the artist is employed by the manufacturer to produce a design that increases the attraction of the product to the public, section 10 provided that if the design was registered under the Registered Designs Act 1949 or used industrially it would not be an infringement of the copyright in the drawing to do anything which was within the scope of the design copyright. Experience proved that this restriction was very damaging to the Birmingham jewellery trade. The jewellery trade naturally employ designers to produce attractive designs for jewellery; their drawings are produced with the same purpose as the artist who hopes to sell his work to the public, namely to produce an object which is in itself attractive. The difficulties of time and expense involved in the registration of jewellery designs inhibited jewellers from seeking this form of protection and lacking the protection of copyright in the truly artistic drawings from which their jewellery was produced they fell prey to copying of their designs by Far East manufacturers against which they had no protection. To provide a remedy Parliament, by the Design Copyright Act 1968, repealed much of section 10 and in effect provided that copyright and design copyright could co-exist but that in such circumstances copyright protection should be reduced to the same period of 15 years as design copyright protection. But purely functional objects were not affected by the Act of 1968, they remained excluded from the protection of design copyright.
I now return to indirect copying. As the earlier cases show, the original justification for giving, reproducing or copying the extended meaning of indirect copying was to achieve the purpose of copyright, namely to give protection to the artist so that he might enjoy the commercial benefit of that which he had created. If the artist had produced an attractive painting it was only just that he should enjoy at least part of the commercial reward of the sale of that painting to the public whether in the form of the original itself or in the form of prints, etchings, photographs and so forth. It was to achieve this purpose that indirect copying was deemed to be a breach of copyright so that others might not benefit unfairly from the artist's skills.
But what is the purpose to be served by deeming indirect copying to be a breach of copyright in a mechanical drawing or blueprint of a purely functional object. The purpose of such a drawing is not to use artistic skill to produce an object of attraction to the public. The draughtsman applies his skill and labour in order to produce a drawing from which the object it depicts can be manufactured, it is in effect an instruction to those in the machine room who have to make the object. Suppose for the moment we are dealing with an independent draughtsman who accepts a commission to produce blueprints of a prototype engine so that the designers of the engine may commence manufacture. I can see that the skill and labour of the draughtsman should be protected by preventing direct copying of the blueprints or using them to make the engine for if that were allowed it would steal from the draughtsman the value of his work. But the draughtsman in such circumstances is not applying his skill and labour to create an original article from which he may justly expect to reap a reward when it is sold to the public. The draughtsman's skill is merely the conduit by which the designer's ideas are communicated to the constructional engineers on the shop floor. In such circumstances, to construe reproducing as including indirect copying is to transfer the protection of artistic copyright from the draughtsman to the manufacturer which is not the purpose of artistic copyright. The courts have, however, so construed the Act in recent years. I am satisfied they have done so because they have applied indirect copying wherever there exists a causal link between the mechanical drawing and the product without considering the purpose that this achieves. I believe this to have been a false step and to have brought about a result never intended by Parliament.
I appreciate, of course, that many design drawings in industry may serve a dual purpose in that the designer employs or is employed to use his skills to produce an object which is in itself attractive and that such a design drawing may also serve the purpose of an instruction to the craftsman or machinist who is to produce the object. No doubt, this applies in the jewellery trade and also in the fashion trade. The work and labour of such designers applied to producing objects attractive in themselves is as worthy of the protection of indirect copying as the work of the artist who paints a picture. Nothing I say is intended to cast doubt upon the justification for extending the protection of indirect copying to such cases.
Where, however, the draughtsman has produced a mechanical drawing or a blueprint of a purely functional object the construction of reproducing in section 3(5) should not be extended to include "indirect copying" but should be limited to its natural meaning of direct copying. This construction will achieve the true purpose of Parliament by giving the protection of artistic copyright to preserve the commercial value of his work and labour and at the same time honour the intention of Parliament, expressed through the Design Copyright Act 1949, that protection should not be extended to manufacturers for purely functional objects devoid of eye appeal.
But would your Lordships be justified in departing from the construction of the Act as it has been applied in recent years and as it was undoubtedly applied by this House in the Swish case [1979] R.P.C. 551. I am very conscious of the fact that I am but a tyro in this field of law, but I have had the benefit of wide ranging instruction over a period of many days of learned arguments that have covered the entire history of the evolution of artistic and design copyright. At the end of the day I am convinced that the courts have taken a wrong turning and misconstrued Parliament's intentions. The error is of recent origin in the history of copyright and I believe that now, after the benefit of far wider ranging argument on the true scope of artistic copyright than has hitherto been addressed to your Lordships' House, it would be right to correct it. I consider this to be one of those rare cases in which your Lordships are justified in departing from a previous decision of this House pursuant to the Practice Statement (Judicial Precedence) [1966] 1 W.L.R. 1234.
I would, therefore, hold that "reproducing" in section 3(5) should not be given the extended meaning of "indirect copying" in cases in which the mechanical drawing or blueprint is of a purely functional object. In such cases the scope of artistic copyright should be limited to the natural meaning of the words, namely direct copying including using the drawing to make the object it depicts. Applying this definition I would hold that Armstrong have not infringed the copyright in the mechanical drawings by copying the exhaust pipe without seeing or receiving any assistance from the drawings and for this reason I would allow this appeal.
I must also admit that I am emboldened to depart from the recent cases because of my misgivings about the alternative solution to the problem presented by this case which is favoured by others of your Lordships, namely the creation of a spare parts exception to the law of copyright.
If I had been persuaded that on its true construction the Copyright Act 1956 extended the protection of indirect copying to all mechanical drawings and blueprints I should find the greatest difficulty in refusing to enforce that protection because it might, in some circumstances, make it more difficult or expensive for the owner of a machine to obtain a spare part.
Whenever Parliament grants a right in the nature of a monopoly, and copyright is such a right, it inevitably interferes in some respects with the freedoms of the public that would exist apart from the monopoly. If a manufacturer has obtained a patent that protects a part of a motor car, let us say the carburettor, it is well established that although the owner of the car may repair the carburettor without infringing the rights of the owner of the patent he is not at liberty to go so far as to have the carburettor replaced by copying it. See Sirdar Rubber Company Ltd. v. Wellington Weston & Co (1907) 24 R.P.C. 539, 543 where Lord Halsbury said:
"The principle is quite clear although its application is sometimes difficult; you may prolong the life of a licensed article but you must not make a new one under the cover of repair."
The same principle would apply to part of a motor car for which the manufacturer had obtained a design copyright, let us say the Mascot, it could be repaired but it could not be replaced by copying it without the licence of the manufacturer.
If, as I must for the purpose of this argument, I assume that Parliament has, through copyright, given a monopolistic right to the manufacturer in the shape of his spare parts, upon what principle is the court free to refuse to enforce that right given by Parliament to the manufacturer? It is said that the manufacturer would be derogating from his grant if he enforced his copyright against another manufacturer because it would interfere with the right of the user of the car to have it repaired. The interference is said to flow from the fact that the spare parts market might be smaller if spare parts could only be produced with the licence of the original manufacturer. This is obviously a possibility but it applies equally to patented items and items protected by design copyright and is an obvious consequence of the grant of a right in the nature of a monopoly.
It seems to me highly improbable that a motor car manufacturer would exploit his copyright either to starve the spare parts market or to increase the fair price for his spare parts for I can think of nothing more damaging to his prospects of selling the car in the first place. However, if it did prove that the right Parliament had given was being abused it is, I think, for Parliament to correct the abuse and not for the courts to refuse to enforce a right that Parliament has given, particularly when it is quite obvious that the exercise of the right must impinge, to some extent, upon the rights of others.
One way in which Parliament could guard against possible abuse in the spare parts market would be to make provision for compulsory licensing as is done in the case of patents and design copyright. The fact that Parliament has not done so is, of course, yet another reason that convinces me that it never intended copyright to be used to protect the spare parts market.
No case has been cited to your Lordships in which the courts have refused to enforce a statutory right because it impinged on other freedoms, yet the examples of such a state of affairs must be legion. I regret that I feel unable to follow your Lordships down this untrodden path.
I agree with Oliver L.J. that on the assumption that copyright protects the exhaust pipe there is no principle of law on which it would be right to refuse BL relief against Armstrong. However, as I have said, I would allow the appeal on other grounds.
