Qualitative v quantitative elements of a design infringement determined by Law Lords.
ACID Member Designers Guild, supported by ACID Legal Affiliate Taylor’s, won a breakthrough copyright case in 2000 against Russell Williams (Textiles) Ltd, trading as Washington DC.
The case concerned an original fabric design created by Designers Guild in 1994. Designers Guild alleged that their design had been copied after seeing a remarkably similar design at an exhibition in Utrecht in 1996. Both the original design and the alleged copy consisted of a vertical striped pattern with impressionistic style flowers scattered over the stripes.
In order to succeed in their copyright action Designers Guild had to show that Washington DC copied their design and that the copy reproduced the whole or “a substantial part” of the original. Although there was no actual evidence of copying, the judge at the trial in 1998 found that there was an opportunity to copy as the Designers Guild Fabric had been exhibited at Decorex in1995, which the designer of the Washington DC fabric had attended prior to creating their design.
The judge found that the similarities between the two designs could only have resulted from Washington DC having copied the design and he rejected their claims that they had created their design independently and any similarities were coincidental. He also considered that the similarities were such that a substantial part of the Designers Guild design had been copied and so found in Designers Guild’s favour.
Subsequently Washington DC appealed on the basis of the finding that a “substantial part” of the Designers Guild design had been reproduced. The Court of Appeal agreed with Washington DC and overturned the trial judge’s decision. The Court of Appeal compared each of the elements of the design and concluded that all that had been copied were “ideas and paint techniques.”
However, Designers Guild felt that more than just their ideas and techniques had been copied and appealed to the House of Lords who gave their judgement in November 2000. The decision was unanimous, in favour of Designers Guild. The House of Lords said that once the copied elements had been identified, the only remaining question was whether those elements formed “the whole or a substantial part” of the original design. The word “substantial” must be given a qualitative rather than quantative meaning. There is therefore no need to show that a large percentage of the original design has been copied, but rather that an important part or parts of the original had been taken. This question should be answered by considering only the original design – there is no longer any reason to consider the copy design and compare it with the original.
This landmark decision made it much easier for designers to take action against copyists who only copy part of a design, or who make deliberate changes from the original.