Copyright in the artwork
The case l'm critiquing is Designer Guild Ltd v Russell William (Textiles Ltd)  F.R. 11, HL.
In this case the House of Lords took the opportunity to restate the principles applicable to the infringement of artistic Copyright.
Designer Guild, who were entitled to copyright in the artwork for a fabric design, appealed against the decision of the Court of Appeal in 2000,that Russell William's replication of the design, although very similar to the original ,was not infringing work because those elements which had been copied were not a substantial part of the design within the meaning of the Copyright Act 1988 s.16 (3).The House of Lords allowing the appeal, that (i) the appellate court was not permitted to reverse a judge's decision in the absence of an erred principle ,Norowzian v Arks Ltd (2000) applied, and (ii) the issue of substantiality, where it was alleged that the entire designed had been copied ,a finding that the similarity between the work were of extent and nature sufficient to support a finding of copying was likely to be determinative.
On 14th January 1998 proceeding were commenced in the Chancery division, sitting as a judge of the Chancery was judge Mr Lawrence Collins QC. The action was brought by Designers Guild who claimed that Russell Williams had infringed its copyright in the painting by coping the Ixia design and incorporating it in its Marguerite fabric. Russell denies infringement. On the 5th February 1998, Mr Collins granted Designers the order by way of injunction and delivery up normal in a case of copyright infringement. Russell Appealed from the order.
On 26 March the Appeal came before Judges Moritt, Auld and Clarke LJJ in the Court of Appeal (Civil Division) because Russell did not challenge the judge's finding of copyright but instead attacked his conclusion on substantiality. The Court of Appeal analysed the components part of the Russell's design and because of certain difference with the Designer's concluded that the part that had been copied did not amount to a substantial part, Court of Appeal reversed the order. Designer Appealed with the permission of Appeal Committee of House of Lords on 7th December 1999 from the decision of the Court of Appeal. The Appeal was allowed.
On 23 November 2000 the Appeal came before Judges Lord Bingham, Lord Hoffman, Lord Hope, Lord Millett and Lord Scott. There Lordship disagreed with the court of Appeal on both grounds of procedure and principle. As regards to procedure, their Lordship noted the role of an appellate court was not to undermine the trial judge's findings of fact and according ,the Court of Appeal had not been entitled to reopen the question of substantiality unless satisfied that the trial judge was misdirecting himself. This was not the case from the facts. The House of Lords analysed each of the ground upon which the Court of Appeal had rejected the trial judge's finding that a substantial part of claimant's design had been copied, and concluded that the Court of Appeal had erred on each point. The House of Lords regarded the Courts of Appeal‘s finding, that the two design did not look alike from each irrelevant to the inquiring as a matter of law because the purpose of comparisons was to establish copying, which the trial judge had concluded that there has been copying and that the conclusion was not open to challenge .The House of Lords reserved the order.
There were two key issues of law that was raised in this case, (i) the appellate court was not permitted to reverse a judge's decision in the absence of an erred principle ,and (ii) whether what had been copied was sufficiently specific to form a substantial part of the copyright work falling within the meaning of s16 (3) of the Copyright ,Designs and Patent Act 1988 which provides that, to infringe an act must be done ‘in relation to the work as a whole or substantial part of it'. There was consensus among the Lords in deterring the functions and duties of the appellate court in considering the issues of fact and in regards to the question as to whether or not the defendant had copied a substantial amount of a claimant's work. All the Lords agreed that the Court of Appeal had erred in overturning the trial judge's finding of fact concerning the substantiality and in reaching his decision the trial judge did not misdirect himself. Lord Hoffman opinion was that: “Because the decision involves the application of a not altogether precise legal standard to a combination of features of varying importance think that this falls within the class of a case in which an appellate court should not reverse a judge decision unless he erred in principle.” See Pro Sieben Media A.G.v. Carlton U.K Television Ltd (1999).
The Lords took the opportunity to restate the principle applicable to infringement of artistic copyright, by resolving the key issue of substantiality by approaching the question of substantial copying. The Lords were also in agreement that the Court of Appeal‘s approach in determining the individual features of the defendant's design and highlighting the dissimilarities between the designs was inappropriate in this case because there was no direct evidence of copying and the trial judge had found the defendant to have in fact copied the claimant design based on existing similarities between the two design, where the issue of substantiality would have been resolved by the trial judge.
The issue on Substantiality: Lords Scott, Millet and Hoffman were of the opinion that the Court of Appeal should not, in relation their appellate function question the issue of substantiality because it was one of mixed law and fact in the sense that it required the judge to apply a legal standard to the facts as found. The question here was whether or not there was substantial copying, according to the Lords judgements, Lord Scott was of the opinion that there was two distinctions: one was were an identifiable part of the whole of the original work had been copied (that is, partial copying of the claimant work) and copying of the original work but with modifications (that is, where the copied portion is altered in some respect).The present case involved the latter of the two, and when addressing such situations, he suggested that a useful test to employ was whether the infringer had incorporated “a substantial part of the independent skill, labour contributed by the original author in creating the original work”. Lord Millett disagreeing with Lord Scott's distinction between or instances of partial or altered copying as “not in the present case”, proffered that once copying had been established “as a result of making a visual comparison between the two works, then it was no longer relevant to consider whether the works were visually similar in relation to the question of whether the defendant had copied a substantial part of the claimant‘s work”.
The question as to whether or not the defendant had copied a substantial part of the claimant work was to be determined by examine the relationship and importance of that which had been taken to the claimant's original work. Lord Hoffman opinion was, “[c]ertain ideas expressed by copyright work may not be protected because, although they are ideas of literary, dramatic or artistic nature, they are not original, or commonplace as not to form a substantial part of the work. Kenrick v.Lawrence (1890) referred to is an example .The notion of combining stripes and flowers would not have amounted to substantial part of the plaintiff's work. The ideas, expressed in the design, would not have represented sufficient of the author's skill and labour as to attract copyright protection”. The test proposed by Lord Hoffman suggests that which was not in his judgement is “whether that which has been taken would itself attract copyright as an original work”. In Designers the Lords concluded that the issue of substantiality in situations of non literal copying in considering whether the features borrowed from the design amounted to an original work.
Certainty, predictability and consistency of the law are important concepts that judges consider when making decisions regarding individual cases, if a case has material facts that are similar to a former decision. Norowzian v.Arks Ltd where the issue of copyright infringement came before the Court of Appeal (Civil Division) the judge held that caution should be taken in evaluating between the similarities and substantiality hence there was breach of copy because there was a striking similarity. This was applied in Designer, followed by Ladbroke (Football) Ltd v. William Hill (Football) Ltd (1964) and it is important to copy the copyright work assessed. There is no need to look at the infringing work for this purpose and considered by the Newspaper Licensing Agency Ltd v Marks & Spencer (2002) Lord Hoffman, in considering the issue of substantiality noting that it was “matter of quality rather quantity”.
Modification / Change Of The Law
I do not think Designer case have modified the legal position. Applying the doctrine of precedent (means similar case with the same principle are treated alike) binds judges to follow the previously established legal principles when determining a present case, it sufficient to illustrate that cases which were applied, followed or considered in Designer, had the same principle on the issue of substantiality which were followed. An example is found in Newspaper Licensing Agency Ltd v Marks & Spencer plc, where Lord Hoffman, in considering the issue of substantiality, noted that it was “matter of quality rather than quantity”. Designer also reaffirms the legal issue of substantiality in regards to s 16(3) of the Copyright Act 1998 to infringe; an act must be done ‘in relation to the work as a whole or any substantial part of it'. In my opinion Designer case has not changed the law rather it has restated the principle applicable to infringement of artistic copyright .However now in the future we have the law has changed and we can see more regulations and Directive which have come into force to emphasis on the protection of designers. An example is Registered Designer Regulation 2001 and Designs (Directives 98/71/EC) which came into force on 6th March 2002. “Where a design is protected by design right registered in or in respect of a Member State in accordance with this Directive shall also be eligible for protection under the law of copyright of that state as from the date on which the design was created or fixed in any form. The extent to which, and the condition under which, such a protection is conferred, including the level of originality required, shall be determined by each member state,” unlike the Act, where the issue of substantiality was been considered.
In Designer case, the statutory interpretation evident was that of metaphor where there was a common understanding running through the Law Lords opinion on the function of copyright. Lord Bingham who provided an illustration the “[t]he law of copyright rests on a very clear principle: that anyone who by his own skill and labour creates an original work of whatever character shall, for a limited period, enjoy an exclusive right to copy that work .No one else may for a season reap what the copyright owner has sown”. That is, the work of a Copyright Act is to protect an individual author. Lord Scott referring to the “test proposed in Laddie” his discussion on “altered copying” where he continued that “this is a useful test, based as it is on an underlying principle of copyright law.namely,that a copier is not at liberty to appropriate the benefit of another's skill and labour”. Finally, Lord Hoffman's commentary, “copyright law protects foxes better than hedgehogs.”
Chacksfield, in discussing Lord Hoffman's unique commentary, observes “it perhaps better to read this statement not as a direct reference but relatively well know quote from the Greek poet Archilochus” but instead by reference to “the famous essay of….Isaiah Berlin (‘The Hedgehog and the Fox')”. He continues: “The hedgehogs and foxes contemplated by Isaiah Berlin represent the two ends of the spectrum of academic historians. On the one hand the ‘Hedgehogs' perceive that the tides of history are directed by grand unifying forces, which act above and beyond the elements of any particular situation. On the other hand the ‘Foxes' subscribe to the belief that the devil, and that history is driven by combined weight of the minutiae. It is a comparison of the important of trivial against the abstraction of grand ideas.”
In the context of Designer case, Lord Hoffmann “the more abstract and simple the copied idea the less likely it is constitutes a substantial part”. Copyright protects the detail within the basic idea was presented; “the more and more of details that one takes from another person‘s work, the greater the chance are that one is talking too much. That is why, Lord Hoffmann's opinion, “[c] opyright law protects foxes than hedgehogs”.
The judges in Designer case appear to have been influenced by the legal principle in reaching their decision. The legal principle in the function of the appellate Court of Appeal in matters of law and facts and the legal principle lied down in s 16 (3) of the Copyright Act 1998 which states that, to infringe ,an act must be done ‘in relation to the work or any substantial part of it'. Looking at the judgement the key issue of law which was raised was whether what had been copied is sufficiently specific to form a substantial part of the copyright work falling within the meaning of s 16(3) of Copyright Act 1988. In my opinion l think that the judges were influenced by this factor to the extent that an Appeal was allowed because in deciding cases where an act of parliament is present, judges tend to follow it to the latter. English judges are consequently wary of exercising their powers in any way that may seem to usurp the legislative role of parliament, thus upholding the doctrine of separation of powers, where the judicial function of judges is to interpret Parliament's intensions as expressed in legalisation.
However in Designer Lord Bingham was persuaded by literal rule -interpretation, were he was trying to find what constituted substantiality in the context of the Act s 16(3).Judges simply apply want is there in the Act. Lords Scott, Millett and Hoffmann were more loyal to precedent which binds judges to follow the previously established legal principles when determining a present case (Designer) .Note that the case is before the House of Lords, so the decision of the House of Lords binds all lower courts. Lower court's decision may only be persuasive and not binding. There are those Judges who are more loyal to precedent, while others are more inclined to literal rule of interpretation…but every law stands on its own.
I think in reaching their decision in Designers, where the judges allowed the appeal the Court of Appeal's decision had been made per incuriam. The judges were of the opinion that the Court of Appeal erred in principle by allowing itself to be distracted from the statutory question, which was whether the elements found as a fact to have been copied formed a substantial part of ixia. Before the House of Lord, the court looks in to matters of law, procedure and not facts. Thus, the Appeal was allowed.
Designer case in my opinion does not leave the law in a clear position. From the fact the judgements, Lords Scott, Millett and Hoffmann upon the question of substantiality, it was clearly seen that they were not in agreement; there emerged no consensus as to what form substantiality test should in fact take. Clark observes, “The decision is in reality of a little assistance in providing advice on how the substantial part test should be applied in future, as different approach taken by Lord Scott resulting in there being no clear majority decision by the Law Lords on application of the test”. With various commentaries stating that the judicial reasoning within Designers Guild appeared upon the case, have proved to be disappointing. In respect to all the judges they were giving us their own opinion on what form the substantiality test should take, but failed to show that copyright is concerned with the striking an appropriate and effective balance between the right of authors and wide public interest. However six month months later after the decision in Designer Guild, the House of Lords were called to deliver a decision upon an allegation of copyright infringement :in the case of Newspaper Agency v Marks & Spencer plc. This clearly shows that Designer case left the law in no clear position. Since Designer, circumstances have changed and in my opinion have left the decision out of date. With the role played by international agreements such as the Berne Convection, different countries apply different lengths of copyright protection work. Berne Convection Article 2 provides, “literary and artistic works”. The original owner of copyright is given work is the person who created it. Although there are exceptions; in many cases, works created in the course of employment will owned by employer.
In my opinion, l do not see the further development of the law following Designers case because it was decided in the House of Lords and decision of the House of Lords bind all lower courts. Although the Lords can depart from their own previous decision; but they will do so only in rare circumstance. (Where there is technical distinction between departing from a decision and overruling it), However should the Parliament intervene then the decision can be overruled by parliament. Under the Doctrine of Parliamentary Sovereignty, judges are subordinate to Parliament, and Parliament may overturn a judicial decision, because Parliament is the supreme legal authority which creates and end any law. When judges interpret statutes they do so with the intension of giving effect to most recent expression of parliaments will. No judge will challenge the validity of the act of parliament.
Designer case did not appear to be consistence with Council of Europe and EU law at that time; however the consolidated form of Registered Designs Act 1946 was reproduced as Schedule 4 of the Copyright Act and further more it was rectified to conform to the EU Community Designs Directive (Directive 98/71/EC). “The aim was to provide provisions setting out the principle under which a claimant may bring an action in relation to validity, enforceability, amendment and any violation of the Design rights”..Although there are number of legislation now governing the law on Designs, these are (i) the Registered Design Act 1949 (as amended by Copyright Designs protection 1988 and Registered Designs Regulation 2001)
(ii) the Copyright ,Designs and Rules 1995 (as amended in 1999 and 2001) and lastly the Registered Design (Fees) Rules 1995 (amended 200l)
Looking at the above legislation we see the laws on copyright have really developed and that copyright protection has been designed to provide a harmonised threshold for protection: thus databases which by reason of selection or arrangements of contents constitute the author's own intellectual creation shall be protected as such by copyright. In my opinion justice was done in Designer case, referring to the reward theory, where a person invests labour irrespective of their ulterior motives or the pleasure of pain, referring to Lord Bingham who commentary that: “[t]he law of copyright rests on the very clear principle that anyone who by his own skill and labour creates an original work of whatever character shall, for a limited period, enjoy an exclusive right to copy that work. No one else may for a season reap what the copy right owner has sown”. This is to say that Copyright protection is granted because it is right and proper to do and that it is right to recognise a property in intellectual production because such production emanate from the mind of an individual author's. I also think that Designer increased the chance of justice being done in the future because it was from this case many legalisations have evolved, although the principle may be different from the case of Designer.
Copyright law should be about the general principle and it must be seen as a legal expression of gratitude to an author for doing more than what the society expects or feels they are obliged to do. Looking at it also in terms of natural right theory we find it on the idea of intellectual labour, where this draws the idea that a person has a natural right over the products of their labour. In which case it is argued an author should also have a natural right over the production of their intellectual labour.
J, Holland and J, Webb, Learning Legal Rules (6th Oxford 2006)
J, Phillips and A, Firth, Introduction to Intellectual Property Law (4th Butterworths Lexis)
R, Deazley, 2004, “Copyright in the House of Lords: Recent cases, judicial reasoning and academic writing”, Intellectual Property Quarterly, pp. 121-137
M, Chacksfield, 2001, The hedgehog and the fox a substantial part of the law of Copyright? European intellectual property Review, pp 259-262.
EU Directive (2005/C 286/03)
Copyright Act 1988 s.16 (3).
Copyright Designs protection 1988 s.16 (3)
Registered Designs Act 1946
https://www.lawteacher.net/copyright law infringement .htm
Table Of Cases
Designer Guild Ltd v Russell William (Textiles Ltd) 
Kenrick v.Lawrence 
Ladbroke (Football) Ltd v. William Hill (Football) Ltd (1964)
Newspaper Licensing Agency Ltd v Marks & Spencer 
Norowzian v Arks Ltd 
See Pro Sieben Media A.G.v. Carlton U.K Television Ltd