Designer Guild Ltd v Russell Williams (Textiles) Ltd

Designer Guild Limited v. Russell Williams (Textiles) Limited (Trading As Washington DC)
Court House of Lords
Decided November 23, 2000
Citation(s) [2001] E.C.D.R. 10
Court membership
Judge(s) sitting Lord Bingham of Cornhill
Lord Hoffman
Lord Hope of Craighead
Lord Millett
Lord Scott of Foscote

Designer Guild Limited v. Russell Williams (Textiles) Limited,[1] is a leading House of Lords case on what constitutes copying in copyright infringement cases.[2] The House of Lords considered whether there was infringement of a fabric design. Although both the copyrighted work and the infringing design were different in detail, the overall impression of the designs was the same. This decision is significant because the House of Lords ruled that copyright infringement is dependent on whether the defendant copied a substantial portion of the original work, rather than whether the two works look the same.[3] The outcome suggests that in the United Kingdom the overall impression of a copyrighted work is protected if the copied features involved the labor, skill and originality of the author's work, even if the copyrighted work and infringing work are different in detail.[4]

Background of case

Designer Guild Limited (“DGL”) and Russell Williams (Textiles) Limited (“RWT”) both design and sell fabrics and wallpapers. DGL held a copyright in its Ixia design. DGL accused RWT of copyright infringement, alleging that the RWT design, Marguerite, copied Ixia. Both designs included a combination of flowers and stripes, a similar style of painting, and use of the resist effect (part of the stripe color shows through the flower petals).

Under section 16(3) of the Copyright, Designs and Patents Act 1988, infringement will be found if there is copying of the work as a whole or any substantial part of it.[5] There were two issues at the trial:

The deputy judge of the Chancery Division found that RWT’s Marguerite design had been copied from DGL’s Ixia design and that there had been copying of a substantial part. The judge identified the copied features as: the combination and relation of flowers and stripes, the manner in which they were painted, and the “resist effect”. The judge determined that the combination of these features formed a substantial part of the Ixia design.

On appeal, RWT challenged the judge’s finding that the copied features formed a substantial part of the Ixia design. The issue of copying was not challenged. The Court of Appeal upheld RWT’s challenge to the finding of substantiality.[6] DGL appealed.

The Court's decision

The House of Lords allowed DGL's appeal, finding no reason to interfere with the judge’s decision.[1]

Lord Bingham of Cornhill

Lord Bingham of Cornhill found that the Court of Appeal erred in dislodging the decision of the judge because:

Lord Hope of Craighead agreed with these reasons and also allowed the appeal.[1]

Lord Hoffman

Lord Hoffman found that the Court of Appeal erred in dislodging the decision of the judge because:

Lord Hoffman provided guidance on the concept that British copyright law protects the expression of the idea rather than the idea itself. He noted two propositions about the distinction between ideas and expression:

  1. "The first is that a copyright work may express certain ideas which are not protected because they have no connection with the literary, dramatic, musical or artistic nature of the work. . . . However striking or original [the idea] may be, others are (in the absence of patent protection) free to express it in works of their own." [1]
  2. "The other proposition is that certain ideas expressed by a copyright work may not be protected because, although they are ideas of a literary, dramatic or artistic nature, they are not original, or so commonplace as not to form a substantial part of the work." [1]

Lord Hoffman concluded that the Ixia expression was more than just the idea of a flower-stripe combination, and therefore original enough to represent the author's skill and labour and form a substantial part of the originality of the work. A writer for the European Intellectual Property Review explained that while he did not explicitly state it, Lord Hoffman provided a new test for whether a substantial part of the original work was copied. The proposed test is whether the part taken would itself attract copyright protection.[7]

Lord Millett

Lord Millett found that the Court of Appeal erred in dislodging the decision of the judge because:

References

  1. 1 2 3 4 5 6 7 8 Designers Guild Ltd v Russell Williams (Textiles) Ltd (t/a Washington DC), [2001] E.C.D.R. 10
  2. 8 New Square: Intellectual Property. "Copyright, Designs and Related Rights". Retrieved 29 May 2013.
  3. Gillhams Solicitors. "Briefing Note - Copyright Infringement in Images & Photographs". Retrieved 29 May 2013.
  4. Ladas & Parry, LLP. "United Kingdom - House of Lords Gives Expansive View of Copyright Protection". Retrieved 10 May 2013.
  5. United Kingdom Copyright, Designs and Patents Act 1988. "c. 48, Part I, Chapter II, Section 16".
  6. Designers Guild Ltd v Russell Williams (Textiles) Ltd (t/a Washington DC), [2000] F.S.R. 121
  7. Mark Chacksfield, E.I.P.R. 2001, 23(5), 261.

External links

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