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You are here: BAILII >> Databases >> England and Wales High Court (Patents Court) Decisions >> Designers Guild Limited v. Russell Williams (Textiles) Limited [1998]
EWHC Patents 349 (14 January 1998)
URL: http://www.bailii.org/ew/cases/EWHC/Patents/1998/349.html
Cite as: [1998] FSR 803, [1998] EWHC Patents 349

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Designers Guild Limited v. Russell Williams (Textiles) Limited [1998] EWHC Patents 349
(14th January, 1998)
IN THE HIGH COURT OF JUSTICE CH 1996 D No. 8007

CHANCERY DIVISION

Before Lawrence Collins QC sitting as a Deputy Judge

BETWEEN:

DESIGNERS GUILD LIMITED

Plaintiff

- and -

RUSSELL WILLIAMS (TEXTILES) LIMITED

(T/A WASHINGTON D.C.)

Defendant
 Alastair Wilson QC and Michael Hicks (instructed by Taylors) for the Plaintiff

Geoffrey Hobbs QC and Iain Purvis (instructed by Addleshaw Booth & Co)

for the Defendant

Hearing dates : 17th - 20th November 1997

JUDGMENT

(corrected)

Mr Lawrence Collins QC

DATED:14th January 1998

Introduction
1) The plaintiff is the designer and manufacturer of fabrics and wallpapers, Designers Guild Ltd ("Designers Guild"). It was
established by Tricia Guild in 1970 and now employs about 250 people and has a turnover of some £28.5 million per annum. Among
its employees are 7 textile designers, and it also commissions designs from free-lance designers. It has a retail shop in Kings Road,
Chelsea. The defendant, Russell Williams (Textiles) Ltd, which trades as Washington DC ("Russell Williams"), was established in
1974. Initially it was a wholesaler of fabrics, but in 1982 began to sell, in addition, through its own shops, as a retailer. At that stage it
did not design or manufacture its own fabrics, but in order to be able to sell exclusive ranges of fabrics it decided to develop its own
ranges, and in the last five years or so it has developed some 200 different designs produced in conjunction with about 4 designers.

2) In September 1995 Designers Guild launched a new range of designs under the name "Orientalis". One of those designs (called
"Ixia") was a striped pattern with flowers scattered over it in a somewhat impressionistic style. The design was successful and
Designers Guild had sales of Ixia of some £171,000 in its first year. In September 1996 Russell Williams exhibited at trade fairs in
Belgium and the Netherlands a striped design (called "Marguerite") with scattered flowers, also in a somewhat impressionistic style.

3) Designers Guild took the view that the Russell Williams design Marguerite had been copied from its Ixia, and, after
correspondence, commenced these proceedings on 24th December 1996. The Ixia fabric was produced from a design painted by
Helen Burke, a designer employed by Designers Guild, and in this action Designers Guild claims that Russell Williams has infringed
its copyright in the painting by copying the Ixia design and incorporating it in its Marguerite fabric. Russell Williams now accepts
subsistence and ownership of copyright in the painting, but denies infringement. The issue for the court is whether, for the purposes of
 sections 16 and 17 of the Copyright, Designs and Patents Act 1988 ("the 1988 Act"), Russell Williams has copied from the Ixia
design and thereby indirectly copied a substantial part of the painting.

Dramatis personae

4) At the trial I heard evidence from the following:

Simon Jeffreys: Mr Jeffreys, who joined Designers Guild about 10 years ago, is its chief executive.

Helen Burke: Miss Burke, who painted the design from which Ixia was produced, was employed by Designers Guild as a textile
designer from September 1992 until the end of 1995.

Christopher Halsey: Mr Halsey has been in the furnishing textile industry since 1963, and worked with Designers Guild since it was
established in 1970, and is now its product development and quality director.

Wilhelmine van Aerssen: Mrs van Aerssen, together with her husband Paul Borghaerts, runs Wilhelmine van Aerssen Agenturen,
Amsterdam (the Dutch agents of Designers Guild), who were exhibiting at the Utrecht exhibition in September 1996.

Gijs Bertus Van Eijsden: Mr van Eijsden is a director of Housestyle Interiors, a Dutch customer of Mrs van Aerssen's company, who
obtained for Mrs van Aerssen samples of the Marguerite fabric at the Utrecht exhibition.

Victor Herbert: Mr Herbert, the expert witness for Designers Guild, has worked as a design consultant for more than 30 years.

Jane Ibbotson: Miss Ibbotson has been a designer for 16 years, and has worked on a free-lance basis with Russell Williams since
1994, and has since designed some 95 different fabrics for it. Her husband was present at one of the meetings referred to later in this
judgment. She, with Mrs Williams, developed the Marguerite design.

Aileen Williams: Mrs Williams has been a director of Russell Williams since it was established in 1974, and she works with designers
in the design and subsequent development of textiles sold by Russell Williams. Her husband, Colin Williams, is also a director.

Lee Reynolds: Mr Reynolds has, since 1986, been the design director of Sunderland & Wild Screen Prints Ltd, which since 1994 has
carried out a large amount of business with Russell Williams, primarily in preparing the colour separations to prepare screens for
textile printing, including those prepared for Marguerite.

Origin of Ixia design

5) The design was created in 1994 by Helen Burke. She and another designer were given a design brief by Tricia Guild for the
spring/summer 1995 collection. Tricia Guild wanted a floral collection in a style which would seem loose and hand-painted, with
brush strokes. Tricia Guild showed the designers two books on Matisse, and together they went through them for about an hour, to
exchange ideas for designs based on the "handwriting" or style and colour and influence of Matisse. Miss Burke's evidence was that
the collection would not be a Matisse collection as such, but one inspired by the "handwriting and feel" of Matisse.
 6) The books which they went through were Elderfield, A Matisse Retrospective, and, according to Miss Burke's recollection, a book
called Matisse in Morocco. In her witness statement Miss Burke said that plate 258 (a 1924 painting) from the Elderfield book was
her only source reference. That plate showed a tablecloth with a very bold stripe which she said she used to create a similar effect in
Ixia, along the lines of a strong but also delicate design. In cross-examination she was taken to a number of other plates of Matisse
paintings from the 1920s in the book (especially plates 248 and 249) with striped tablecloths, and she accepted that in her statement
she had included plate 258 simply as one example as a point of reference, and she also accepted that she had not based herself solely
on that plate. She was also shown plates (especially plate 257) with flowers which she accepted were similar to those on her design,
and when asked whether she had been strongly influenced by what she had seen of the tablecloths and flowers in the Elderfield book,
she accepted it in the case of the tablecloth, but "not particularly the flowers".

7) Mr Geoffrey Hobbs QC, for Russell Williams, drew attention to what he described as discrepancies between Miss Burke's witness
statement and her oral evidence: in her statement she had said that, after being given a brief by Tricia Guild to design around a
Matisse feel, she had gone to the library to consult books on Matisse - her oral evidence was that Tricia Guild had brought the books
to her and the other designer; in her statement she had said that her only influence had been plate 258, but accepted in the course of
cross-examination that that was chosen as an example only. Mr Hobbs' purpose was (inter alia) to lay the groundwork for his
argument that in determining whether a substantial part of the copyright work had been copied the court should, in his words, "make a
mental subtraction to allow for the derivation of the work". The witness statement was perhaps not prepared as carefully as it could
have been, but I do not accept that there was a deliberate attempt to enhance the originality of Miss Burke's design. She was, in my
judgment, a reliable and spontaneously frank witness. I accept her evidence that she was not particularly influenced by the Matisse
flowers. Although there is a clear influence of the table cloth stripes, the Matisse flowers do not bear a marked resemblance to those
in her design: hers are distinctly more impressionistic.

8) The remainder of Miss Burke's account of the development of the design was not challenged. She prepared a number of acrylic-
painted drafts, which were discussed with Tricia Guild and with the studio manager, Claire Brett. Her early drafts had small bouquets
of flowers, but after she told Tricia Guild that this was too "twee" and too busy, they decided that the flowers should be simplified and
be scattered across the design to make it more open and free.

9) The initial yellow flower which she used was changed to white because it gave a more fragile impression to the design, worked
well on the stripe, and did not "fight" with the colour. She wanted to break up the stripe as well, and used an acrylic paint to create a
translucent and delicate feel, her objective being to have the flowers stand out from the stripe, but not too boldly. She did not want the
flower or the design to look "hard", and she tried to balance this stripe and flower between a bold, coloured design but also soft at the
edges, which is why she adopted a hand brush stroke technique. To contrast and at the same time complement the stripe, she used the
white flowers in a delicate and hand brushed two tone petal, almost transparent or opaque over the top of the stripe to give the
impression of a three dimensional depth. The painting of the final design took her about one full day.

Background to proceedings

10) Miss Burke produced 10 or 12 colourways, and Tricia Guild selected three: pink, blue, and turquoise. The design was approved
by the Designers Guild board for inclusion in the 1995 "Orientalis" collection. Pattern (or sample, or swatch) books of the collection
were distributed to the Designers Guild's wholesale and retail customers from August 1995, and the range (including Ixia) went on
open sale at its shop in Kings Road, Chelsea, London, on 1st September 1995. The range was displayed at the trade exhibition
"Decorex" in Syon Park, London, on 1st October 1995. The design was successful and by October 1996 Designers Guild had sold
16,392 metres at a value of some £171,000.

11) On 15th September 1996, Mr Jeffreys, the chief executive, was telephoned from the Utrecht exhibition by Mr Paul Borghaerts,
who with his wife, Wilhelmine van Aerssen, has a business which (as I have said) acts as the Designers Guild Dutch agent, and who
were exhibiting at Utrecht. The essence of the conversation was that Mr Borghaerts and his wife were concerned because a number of
their customers and members of the press had approached them to say that copies of Designers Guild designs had been seen on other
exhibitors' stands. Mr Jeffreys went to Utrecht, and one of the stands he visited (together with a Dutch lawyer) was that of Home
Sweet Home, the Dutch distributor for Russell Williams. He took the view that a fabric being exhibited there (Marguerite) was a
copy of Ixia. When he returned to England he discussed the position with Mr Halsey, the product development and quality director,
who himself had similar concerns about the Russell Williams design, which he had seen at the TIP exhibition in Brussels earlier that
month.

12) On 1st October 1996 solicitors for Designers Guild wrote a letter before action to Russell Williams, complaining that Marguerite
was an infringement of Designers Guild's copyright in Ixia. The substantive reply from the solicitors for Russell Williams on 4th
October 1996 was as follows : they did not consider that the two designs were similar, and rejected the contention that they had been
copying; their instructions were that the Russell Williams design originated from a piece of original art work made by Jane Ibbotson,
which followed an open leaf motif often used in depictions of Chinese cherry blossom trees; that design had been taken in two
directions, one of which was a closed cherry blossom design and which was not relevant, and the second in the direction of what
became Marguerite; the original art work for that was made in or about October 1995, and was not produced in the original
colourways except for the flower overlays, and the colorations were made subsequently by Mrs Williams. The letter went on as
follows:-

"This design followed very closely upon a very successful muslin design, a sample of which is
enclosed herewith. The abiding feature of that design was a closed daisy on a plain coloured
lined background which is apparent from the sample enclosed. Our clients were anxious to
reproduce a series of fabrics with a muslin and which built upon the success of their own
collection. The daisy collection to which your clients can have no complaint, was made in
January 1995 and first sold in April 1995. One of the reasons for the change to the open flower
design was that on the darker fabrics which were later added to the collection the background of
the cloth tended to print through. This has been avoided in our client's "Marguerite" design. The
overwhelming features of the Marguerite design as is apparent are a number of broad stripes
which are of a painted on effect which is popular and relatively common amongst a number of
cloth manufacturers. There is superimposed the flower which is very deliberately either four
petals or three petals with different coloured stamens. A considerable amount of the leaf which
dates back to the original Open Cherry Blossom design is apparent on the fabric. Save for the
pink and white (which is a very different shade from your client's red) and the colourways have
 no resemblance in colour, the overall feel and visual effect is different and those differences can
be summarised as follows:-
Your client's design is of a narrow stripe repeating across the fabric. It conveys a totally different impression.
The amount of leaf is limited and is abstract rather than definite. The flowers themselves are faded and less
prominent, and the leaf sizes being different. The stamens do not appear on all the flowers and are again less
prominent than our client's design. Of the three colourways we have seen, the stamens also are in the same
principal colour and not contrasting. These differences are not surprising as on our instructions our client's
work is independently originated."

13) The letter did not state that either Miss Ibbotson or Mrs Williams was unaware of the Ixia design when Marguerite was
developed. The letter gives the impression that Marguerite was in some way influenced by the "Daisy" design: but in the course of
the proceedings it emerged that all that was being said was that Mrs Williams wanted to repeat the success of a floral design which
would work both on cloth and on muslin.

14) A writ was issued on 24th December 1996, and the statement of claim was served on 8th January 1997. In the defence served on
16th January 1997 no admissions were made as to the origination, ownership or subsistence of copyright by Designers Guild. On 20th
June 1997 Designers Guild's solicitors served a notice to admit the fact (inter alia) that Designers Guild was the owner of the
copyright in the original artistic work, and in the amended defence served on 11th November 1997 Russell Williams admitted
subsistence and ownership of copyright in the painting.

Applicable principles

15) The principles to be derived from the cases cited to me may be summarised as follows:

1. 1. The protection given by the law of copyright is against copying, the basis of the protection being that one person
must not be permitted to appropriate the result of another's labour; it is for the plaintiff to establish and prove as a matter
of fact that copying has taken place: LB (Plastics) Ltd v Swish Products Ltd [1979] RPC 551, 619 (H.L.), per Lord
Wilberforce.

2. 2. There must be a sufficient resemblance between the copyright work and the alleged infringement, but there is no
copyright in a mere idea: e.g. Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273, 287 (H.L.), per
Lord Hodson; LB (Plastics) Ltd v Swish Products Ltd [1979] RPC 551, 619 (H.L.), per Lord Wilberforce.

3. 3. The degree of resemblance required has been said not to be merely a similarity or resemblance in some leading
feature or in certain of the details but, the idea and general effect created by the original being kept in mind, a degree of
similarity as would lead to the conclusion that alleged infringement is a copy or reproduction of the original, having
adopted "its essential features and substance": Hanfstaengl v Baines [1895] AC 20,31, per Lord Shand.
 4. 4. It does not follow from the fact that the individual parts of a copyright work may not be copyright that therefore the
whole cannot be: a wrong result can be reached by dissecting the plaintiff's work and asking if each part separately could
be protected if it stood by itself: if sufficient skill and judgment have been exercised in devising the arrangement of the
whole work that can be an important or even decisive element in deciding whether the work as a whole is protected by
copyright: Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR at 277, per Lord Reid.

5. 5. If part of the plaintiff's work has been copied, there will be an infringement if a "substantial part" has been taken
(1988 Act, s.16(3)(a)), and for this purpose whether what has been copied is a substantial part depends much more on the
quality than on the quantity of what has been taken, or more on its substantial significance rather than its physical
quantity: Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR at 277, 283, 293, per Lords Reid,
Evershed and Pearce.

6. 6. There must be a causal connection between the copyright work and any infringing work; infringement may be
negatived by acceptable evidence of independent design, and copying may not be an infringement if it fails to create a
sufficient resemblance to amount to a reproduction: Billhöfer Maschinenfabrik GmbH v TH Dixon & Co Ltd [1990] FSR
105, 107, per Hoffmann J.

7. 7. There is no infringement if a person arrives by independent work at a substantially similar result to that sought to be
protected; but the beginning of the necessary proof of copying normally lies in the establishment of similarity combined
with proof of access to the plaintiff's productions: LB (Plastics) Ltd v Swish Products Ltd [1979] RPC at 619, per Lord
Wilberforce. If there is proof of access and a sufficient similarity, there will be a shift to the defendant of the evidential
burden, i.e. prima facie evidence of copying which the party charged may refute by evidence that, notwithstanding the
similarity, there was no copying but independent creation: ibid at 625, per Lord Hailsham of St Marylebone, citing King
Features Syndicate Inc. v O&M Kleeman Ltd [1941] AC 417, 436, per Lord Wright.

Expert evidence

16) Designers Guild submitted expert evidence from Mr Herbert that Ixia and Marguerite were similar and also that Russell
Williams had copied the Ixia design, and Mr Halsey, relying on his long experience in the industry, gave evidence not only of
similarity but also expressed the opinion that Russell Williams had reproduced substantial elements of the Ixia design.

17) Although it has been accepted that expert evidence may be called to point out similarities or coincidences to support the
contention of copying (see Laddie, Prescott and Vitoria, Modern Law of Copyright and Design, 2nd ed. 1995, p.187), the orthodox
position until recently would have been that the question of whether the defendant's work is a copy is a question for the court and one
on which an expert's opinion would not be admissible: ibid. That is because of the traditional view that normally expert evidence on
the ultimate or real issue in the case is not admissible. But it has now been recognised (in contexts other than copyright infringement:
but the principle is the same) that a change has been effected by the Civil Evidence Act 1972, section 3, which provides:

"(1)... where a person is called as a witness in any civil proceedings, his opinion on any relevant
matter on which he is qualified to give expert evidence shall be admissible in evidence.
 ...
(3) In this section 'relevant matter' includes an issue in the proceedings."
18) In Re M and R (minors) [1996] 4 All ER 239, 249-254 (C.A.) it was held (treating dicta to the contrary in previous judgments as
per incuriam) that the effect of the 1972 Act was to make expert opinion on the ultimate issue admissible. Section 3 had given effect
to the recommendation of a 1970 Report of the Law Reform Committee on Evidence of Opinion and Expert Evidence that "a
statement by an expert witness ... shall not be inadmissible upon the ground only that it expressed his opinion on the issue in the
proceedings ...". But the Court of Appeal emphasised that the judge should never lose sight of the central truths that the ultimate
decision is for the court and that all questions of relevance and weight are for the court: at 253-4, per Butler-Sloss L.J. In Routestone
Ltd v Minories Finance Ltd (1997) 21 EG 148, decided a few days before, Jacob J came to a very similar conclusion.

19) I shall deal later with the expert evidence on similarity and copying, and the limited extent to which it is useful. But this would be
a convenient point to mention the qualifications of Mr Herbert and Mr Halsey. Mr Herbert has worked as a design consultant for more
than 30 years; and he has been both a garment and fabric designer. Mr Halsey has had more than 30 years experience in the selection
and production process for textile and wallpaper design.

20) Mr Hobbs QC submitted that Mr Herbert did not have an open mind, and was very opinionated; that he had formed an opinion at
an early stage which, whatever was shown to him, he would not change; and that he was in effect an advocate for the Designers Guild
cause. Mr Hobbs QC also pursued a line of questioning which was critical of Mr Herbert for expressing his opinion before he had
seen the Russell Williams evidence: but the order for directions of 8th April 1997 provided for service of his expert report at the same
time as exchange of witness statements. I reject Mr Hobbs' criticisms of Mr Herbert. I found him a careful and helpful witness: it is
true that he expressed his views forcefully (and sometimes passionately) but I did not find him to be lacking in objectivity.

21) Mr Halsey was not put forward as an expert witness: but his evidence, based on his long experience in the industry, was given,
and he was cross-examined on it. He did not claim any expertise which he did not have. He too was a careful and helpful witness.

Similarity

22) In this action the relevant copyright work is the artwork or painting produced by Miss Burke in 1994. All of Designers Guild's
witnesses, including their expert, concentrated on similarities between the Ixia fabric and the Marguerite fabric: that is of course
because the real complaint, in commercial terms, is that Russell Williams copied the Designers Guild fabric design. Since it cannot be
suggested that Russell Williams had access to the artwork, the case is one of alleged indirect copying. A comparison between the two
fabric designs is a legitimate starting point on similarity, provided that any material differences between the artwork and the fabric are
taken into account. The main differences are that in the fabric the stripes are slightly wider, and the flowers are smaller and more
numerous, than in the artwork. These are not, in my judgment, material differences.

23) Three colourways of Ixia were produced: pink, blue and turquoise. Four colourways of Marguerite were produced: pink, blue,
green and lemon. It was the alleged similarity of the pink colourways in each fabric which first struck the employees and agents of
Designers Guild and that is why its expert's report was based on a comparison between the fabrics in the pink colourways. Again, in
my judgment that is a legitimate starting point provided that it is borne in mind that Miss Ibbotson's artwork had yellow and orange
stripes, white and red flowers, green stalks and leaves in two shades of green, and that Mrs Williams tried out some 40 colourways
 before choosing the four colourways (three of which had Ixia parallels to a greater or lesser extent) which were commercially
developed.

24) The similarities are these:

8. 1. Each fabric consists of vertical stripes, with spaces between the stripes equal to the width of the stripe, and in each
fabric flowers and leaves are scattered over and between the stripes, so as to give the same general effect.

9. 2. Each is painted in a similar neo-Impressionistic style. Each uses a brushstroke technique, i.e. the use of one brush to
create a stripe, showing the brush marks against the texture.

10. 3. In each fabric the stripes are formed by vertical brush strokes, and have rough edges which merge into the
background.

11. 4. In each fabric the petals are formed with dryish brushstrokes and are executed in a similar way (somewhat in the
form of a comma).

12. 5. In each fabric parts of the colour of the stripes shows through some of the petals.

13. 6. In each case the centres of the flower heads are represented by a strong blob, rather than by a realistic
representation.

14. 7. In each fabric the leaves are painted in two distinct shades of green, with similar brush strokes, and are scattered
over the design.

25) The overall impression is very similar, but there are differences. The Ixia design is smaller and more delicate and the detail is
different. In Marguerite the effect of the stripes showing through the petals is not as marked as it is in Ixia. The leaves in
Marguerite are distinctly less impressionistic than those in Ixia. The impression of similarity is more marked on a comparison of the
pink colourways.

26) The Designers Guild witnesses expressed the view that the defendant's design had the characteristics of the Designers Guild
"handwriting", i.e. "the bold uncomplicated free hand painting technique characteristic of the [Designers Guild] perceived image": Mr
Herbert's witness statement, para 23. Mr Halsey also expressed the opinion that Marguerite had the Designers Guild "handwriting".
Mrs van Aerssen, the Dutch agent, also thought that Marguerite was in the style of the Designers Guild. But this is not a passing-off
case, and it is clear that, for Designers Guild to succeed at the first stage of similarity, it must show much more than a similarity of
style or "handwriting".

27) The similarities between Ixia and Marguerite were thrown into relief by two fabrics made by other manufacturers which Mr
Williams obtained for the purpose of these proceedings. Both were striped designs using a brush-stroke technique. Although Mrs
Williams did not accept that Mr Williams had gone around looking for designs which looked like Ixia, common sense suggests that
these were the closest that Mr Williams, with his knowledge of the trade, could find. Mr Halsey had said in his witness statement
(served in June 1997) in a passage the admissibility of which is challenged: "To this day I am aware of no design on the market which
is as similar to Ixia as is the Defendant's Marguerite" (para.4). That may not be admissible evidence of similarity, but it amounts to
a challenge which was either not taken up by Mr or Mrs Williams or one which they endeavoured to overcome by acquiring the two
samples. The two designs were by Harlequin ("Fez") and by Anna French ("Buttercups and Daisies"). The Harlequin design has
stripes showing brush strokes: the Anna French design has different types of flowers and petals arranged across stripes.

28) They were shown by Mr Geoffrey Hobbs QC to Miss Burke, who said that the Harlequin used a brush stroke technique in water
colour, and that the Anna French design used a very liquid water-based paint. Miss Burke contrasted those designs with her own,
which she said used acrylic paint, which was much stiffer and allowed her to create very big brush strokes, which created an effect of
brush marks against the texture of the stripe, which was missing on the Anna French design (although it can be seen on the Harlequin
design). Mrs Williams was shown these designs. She agreed that the stripes on the Anna French design were painted in a different
way without lines going up and down, and that it had rather harder edges; that the flowers did not have the dry paint brush effect; that
the stripe did not appear through the petals; that the style of the flowers was wholly different; that the leaves had more colours; that,
instead of one type of flower, it had different flowers; the flowers did not have a blob in the centre; but she did not accept that any
similarities between that design and Ixia were the sort of thing which might be expected from coincidence, and that Marguerite was
the sort of design which might be expected from copying. She was shown the Harlequin design, and agreed that, although there was
something in common with Ixia in the way the stripes were depicted, there was a major difference that there was an additional
narrow stripe down the side of the main stripe.

29) Some opinion evidence of similarity was adduced, but its utility is very limited. The witness statement by Mr Halsey, the product
development and quality director of Designers Guild expresses his view of the similarities and he was cross-examined on the
differences. Mr Herbert, its expert, expressed a view on the similarities (and also on whether there had been copying, to which I shall
revert). The ways in which their evidence was helpful on the issue of similarity were Mr Halsey's explanation of the "resist" technique
or effect (which enables the impression to be given that an undercolour is showing through ) and Mr Herbert's evidence on the brush-
stroke technique in the two designs. But their evidence on the general similarities was essentially evidence of opinion and cannot be
said to add much to what can be seen by the eye, and which was put by Mr Alastair Wilson QC for Designers Guild.

30) A point on which there was agreement was that both Ixia and Marguerite had the "resist" effect of the colour of the stripes
showing through the petals. Mr Halsey was invited by Mr Hobbs to accept that there was no "resist" effect in Marguerite, i.e. that
the colour of the stripes did not show through the petals: but he pointed out that there was such an effect; and Mrs Williams also
accepted in cross-examination that the stripes showed through the petals:

"Q ... On your design, as on ours, there are areas on your petals - - not as many as in ours, but
nevertheless there are areas on the petals - - where the stripes show through.
A Yes. There is a colour there, yes.
Q In fact it happens two ways on your design. Sometimes it is because the white is not fully in
register with the bleached-out portions and a bit of the red is showing through. In fact it is
showing through pink.
A Yes.
 Q Sometimes you have a hole in the petal which shows through more or less with the stripe
colour?
A That is correct."

15. She agreed that in the Anna French design the stripe had not been allowed to shine through the petals.

31) In my judgment, Designers Guild has clearly shown relevant similarity. The similarities are apparent. They go far beyond the
similarities which would be expected simply from both being based on an impressionistic style or from both being based on a
combination of stripes and scattered flowers and leaves. But the combination of, in particular, (1) the way in which the petals and
leaves are scattered; (2) the use of the brush-stroke technique showing the brush marks; (3) the similarity of the flowers (especially
the depiction of the petals and centre of the flowers) and leaves; (4) the way in which the stripes can be seen through the petals,
involve a similarity which, despite the differences of dimension, is very close.

Opportunity to copy

32) Mr Simon Jeffreys, the chief executive of Designers Guild, gave evidence about the availability of the Ixia design and fabric. As I
have said, the design was part of the Orientalis range, which was launched on 1st September 1995, when it went on sale to the general
public at its shop in King's Road, Chelsea. In the three weeks or so prior to the launch Designers Guild distributed pattern or sample
books, and brochures (or leaflets) to its wholesale and retail customers in the United Kingdom and abroad, so that wholesalers and
key retail customers would have them by the launch date. In his first witness statement Mr Jeffreys put the number of pattern books so
distributed at 1500 distributed shortly after launch of the range; in a supplemental statement he said that pattern books were widely
distributed to customers from August 1995 onwards, including more than 250 books to the UK market before the end of August 1995.
As a result of his oral evidence, it appears that accurate figures are not readily available, but a figure of 250 or thereabouts to the end
of September 1995 is reasonably accurate. Among those who receive the pattern books free of charge are customers (such as
department stores) whose names are mentioned in the Designers Guild advertising as stocking its products. One of those customers
was Selfridges, which ordered three 30 metre rolls of Ixia in August 1995.

33) Designers Guild also printed 30,000 copies of what it describes as a brochure for the range. It is a four page handout, with a small
picture of Ixia on the side of the second page. 1500 of these were sent to UK customers in August 1995. I do not regard these as
being of any significance for the purposes of deciding whether there was an opportunity to copy.

34) The first trade exhibition at which the Orientalis range was displayed was at the "Decorex" show at Syon Park, London, on 1st
October 1995, which Mrs Williams attended.

35) The Russell Williams design was created in October and/or November 1995. By then Ixia was available in the Designers Guild
shop and in department stores (and had been shown at a trade fair attended by Mrs Williams). In my judgment there is the requisite
degree of access or opportunity to copy.
The Marguerite design

36) The account by Miss Ibbotson and Mrs Williams of the evolution of the Marguerite design is as follows. In about October 1995
Miss Ibbotson, was approached by Mrs Williams to produce a Chinese style design. Mrs Williams had exhibited at the TIP exhibition
in Brussels in October 1995, and as a result of contact with Australian exhibitors, Mrs Williams had obtained a copy of Australian
"Vogue Interiors" containing Chinese-style designs. Mrs Williams was particularly looking for a design which would be suitable for
printing on both muslin and cloth. This was important to Mrs Williams as it was not always possible to tell which designs were going
to be successful on which type of fabric, and so designs are developed for both cotton and muslin to give greater flexibility of range.

37) Mrs Williams and Miss Ibbotson met in Manchester in October 1995 when Mrs Williams described what she had in mind, and
suggested "something with blossoms", or a very loose floral. They looked through a few books and pictures with a Chinese "feel".
Following this meeting, Miss Ibbotson created a mulberry original in October 1995. This artwork is referred to in this action as
"Open Cherry Blossom", and may be shortly described as consisting of a broad stripe in two shades of mulberry with blossoms
superimposed. The centre of the flower is represented with spikes radiating from the it (referred to by Mr Alastair Wilson QC for
Designers Guild as a kiwi fruit or cat's whiskers effect, or by Miss Ibbotson as a star effect).

38) "The blossom was also painted separately on acetate to enable the motif to be used separately on a muslin cloth" ( Miss Ibbotson's
statement, para 3). Miss Ibbotson "had placed a sheet of acetate over the artwork and re-painted the white open blossom motif directly
onto the acetate so that it could be used for printing on muslin" (Mrs Williams' statement, para 8). In the witness box Miss Ibbotson
said the acetate was painted as an overlay to sit on Open Cherry Blossom design which could be used separately to show how a
muslin would work, or to show how Open Cherry Blossom would look with white flowers. It was painted with gouache, a water
based paint, mixed with a little washing up liquid to make the paint adhere to the acetate. The white paint was straight from the tube,
but the greens and the red were mixed by her for the shades she wanted.

39) The acetate contains white flowers (with a red centre), green stems, and leaves in two shades of green. The centre of the flowers
on the acetate does not have the spike effect found on Open Cherry Blossom and can be described as an impressionistic "blob".
Mrs Williams and Miss Ibbotson used the working title "Tumbling Floral" for the design on the acetate because of the
placement/movement of the flowers. Mrs Williams liked the "Tumbling Floral" design, but it was not what she had in mind for the
Chinese design (although it reminded her of a successful previous design produced by Russell Williams in January 1995 called
"Daisy"). Accordingly, Mrs Williams decided to develop, from the Open Cherry Blossom/Tumbling Floral design, two separate
designs, one which incorporated the open blossom motif on the acetate which could be developed along the "Daisy" line and another
which had a more Chinese feeling to it by re-designing the shape of the blossom on Open Cherry Blossom but retaining the
mulberry background.

40) As a result, Miss Ibbotson produced two further pieces of artwork which she presented to Mrs Williams in mid- November 1995
at the premises of Sunderland & Wild Screen Printers Ltd in Rochdale. One of the designs was a variant on Open Cherry Blossom,
in which the scale and density of the floral trail was altered ( the centre of the flower was made smaller but still contained the spike
effect).
41) The second piece of artwork was a two colour (orange/yellow) striped background from which had been bleached the floral
design from the acetate. This was done by placing the acetate on a box through which light shows through, and the striped artwork on
top of the acetate, and by painting the artwork with bleach in the places on the stripes corresponding to the artwork on the acetate
below.

42) Mrs Williams discussed colour separations of the designs with Lee Reynolds, a director of Sunderland & Wild, and then agreed
with her husband that both designs should be put into production. The variant on Open Cherry Blossom was produced by
Sunderland & Wild in time for the Heimtextil exhibition in Frankfurt in January 1996, at which the defendant was exhibiting. It was
commercialised as Chinese Cherry Blossom.

43) Sunderland & Wild did not have the capacity to produce colour separations for the combination of the bleached striped artwork
and acetate in time for the Heimtextil exhibition, and initial separations were made in February 1996. When she went to Sunderland
& Wild to look at them, Mrs Williams suggested to Mr Reynolds that the positioning of the green stems be changed, that the stripes
be made less harsh, and that the paste white area be tidied. In mid-February 1996 Mrs Williams approved the final separations, and
later that month and in March 1996 Sunderland & Wild, after discussion with Mrs Williams, produced about 40 small fabric samples
(minis) in various colours and combinations (including the original orange/yellow combination), from which Mrs Williams chose four
colourways (pink, blue, yellow and green), which were commercialised as "Marguerite".

44) Mrs Williams says she was not aware of the Ixia design when she commissioned the design from Miss Ibbotson, nor when she
developed the colourways for Marguerite. She attended the Decorex exhibition in September 1995, where Designers Guild
displayed Ixia, but does not recall seeing the fabric there. She also attended the Heimtextil exhibition in January 1996 but does not
recall seeing even the Designers Guild stand there. Miss Ibbotson says that her designs were original and she did not have or make
reference to any Designers Guild fabrics when creating the artwork for Open Cherry Blossom, Chinese Cherry Blossom or
Marguerite. She exhibited at the Heimtextil exhibition in January 1996, but does not recall seeing the Ixia fabric on the plaintiff"s
stand.

45) The essence therefore of the defence is that (a) neither Mrs Williams nor Miss Ibbotson knew of the Ixia design when the
Marguerite design was produced and executed; (b) any similarities between Ixia and Marguerite are coincidental; and (c) the
Marguerite design evolved from the floral part of the Open Cherry Blossom design being copied onto the acetate for use on
muslin, or to show how Open Cherry Blossom would work with white flowers.

46) When Mrs Williams was asked, " ... what you are saying is that all those similarities that occur in this case are coincidental ...?",
she replied "Yes, I suppose so." Although she did not accept that coincidental similarities between floral striped designs were
illustrated by the Harlequin and Anna French designs which her husband had bought for the purpose of the proceedings, and which I
have described in section VII above, in my judgment they do show features with Ixia which are inherent in the nature of striped
designs or striped floral designs and that it is extremely improbable that the similarities between Ixia and Marguerite could be the
result of coincidence. There are simply too many, and too many obvious, similarities, any one of which could of itself be coincidental,
but the combination of which could not.
47) Miss Ibbotson and Mrs Williams each gave evidence, as I have said, that the origin of Marguerite was the acetate floral design
which, in October 1995, had been painted over Open Cherry Blossom. If the account of the origin and purpose of the floral design
on the acetate were true (namely to enable the floral motif on Open Cherry Blossom to be used for printing on muslin, or to show
how it would look with white flowers), it would be evidence that Miss Ibbotson and Mrs Williams were not engaged on an exercise of
"tracking" Ixia, because it would demonstrate that the inspiration for the floral part of the design was Open Cherry Blossom, and
would distance the creation of the floral design from the striped pattern, both in time (about a month) and in creative concept.

48) The starting point is that the acetate design does not precisely "fit" over, or register with, Open Cherry Blossom. Mr. Herbert's
evidence, which is easily confirmed by the naked eye, was (after it had been put to him by Mr Hobbs QC for Russell Williams that
Miss Ibbotson was endeavouring to copy what was underneath) that the acetate did not match Open Cherry Blossom accurately,
that in one case a flower on the acetate was at least a centimetre away from the corresponding flower on Open Cherry Blossom,
and in another case parts of the flower were 10mm to 12mm apart. It was put to him that these were minor discrepancies, but his
evidence was that a discrepancy on the acetate was a centimetre, and an acetate is normally a very accurate rendition of what is
underneath, unless it was being used for some other purpose.

49) Miss Ibbotson accepted that the acetate did not fit exactly, but that was intentional because "Mrs Williams particularly wanted the
white petals to fall on to the white cloth, rather than falling on to a colour". It was put to Mrs Williams that "the register [between the
acetate and Open Cherry Blossom] is atrocious". She did not disagree but supported Miss Ibbotson by saying that Miss Ibbotson
was painting in a loose or very free style, and she accepted that the registration between the acetate and the striped artwork was
significantly better.

50) The lack of registration does not necessarily mean that the acetate was not painted by laying it over Open Cherry Blossom. The
positioning and arrangement of the flowers is very similar, and the shapes of the stalks and leaves are very close. But the lack of
registration is some evidence that, even if the acetate was painted by placing it over Open Cherry Blossom, the intention was not to
make a copy, but to form part of a separate design. This is confirmed by the fact that the styles of the acetate and Open Cherry
Blossom are different. In particular, the flowers on the acetate are different from those on Open Cherry Blossom. The flowers on
the acetate have the characteristics (which appear on Ixia but not on Open Cherry Blossom) that the petals are painted in the form
of a comma or snail (as Mr Herbert accurately described them) and the centre of the flower is a "blob", whereas the petals on Open
Cherry Blossom are rounded and the centre of the flower has the kiwi fruit or cat's whiskers or star effect. Miss Ibbotson accepted
that the centres of the flowers were different, but suggested that "the two worked together". When it was put to her that if the acetate
artwork were placed on Open Cherry Blossom, the former would have obliterated the "cat's whiskers" she replied "bits of [the cat's
whiskers] would have sparkled around the side of it".

51) Next, but of less significance, there is no relationship between the colours on the acetate and those on Open Cherry Blossom, as
Mrs Williams accepted. The greens on the acetate are the same greens as on Ixia and there is no green on Open Cherry Blossom.
When it was put to Miss Ibbotson by Mr Alastair Wilson QC for Designers Guild that the colours of the acetate did not sensibly relate
to the colours of Open Cherry Blossom, her unsatisfactory answer was "Beauty is in the eye of the beholder, as they say".
 52) I conclude that this explanation, that the purpose of the acetate was to enable the motif on Open Cherry Blossom to be used
separately on a muslin cloth and to show how Open Cherry Blossom would look with white flowers, is wholly inconsistent with a
design of the flowers and leaves which is different from Open Cherry Blossom, and I must reject the evidence of Miss Ibbotson
and Mrs Williams. I accept Mr Geoffrey Hobbs QC's submission that demeanour is only one element in evaluation of credibility: but
Miss Ibbotson was a very unsatisfactory witness, and both she and Mrs Williams, far from being helpful and frank, were content to
deny the obvious. When pressed on the origin of the acetate Miss Ibbotson said "I am sticking to my story", and although she was to
some extent rescued in re-examination from the implications of that statement, in my judgment she gave just that impression. But my
conclusion is not based on demeanour but on the evidence itself.

53) In my judgment the explanation was designed to provide a false provenance for the floral part of the Marguerite design, and to
distance it from the creation of the striped artwork. The acetate and the striped artwork were created to be used together. It is very
probable indeed that the acetate and the striped artwork ware created at around the same time. The combination of acetate and striped
artwork provided a combination which could be used for the dual purpose (as it was) of producing fabric with the floral design and
the stripes, and muslin with just the floral design, whereas the combination of the acetate and Open Cherry Blossom could not
provide it.

54) It is common ground that the final Marguerite design is a combination (with Mrs Williams' modifications) of the acetate and the
striped artwork, and once the account of the origin of the acetate from Open Cherry Blossom is rejected, it is simply common sense
which leads to the conclusion that the acetate and the striped artwork were created together. In my judgment the effect of the (1) many
and obvious similarities; (2) the opportunity to copy; (3) the complementary nature of the acetate and the striped artwork; and (4) the
false provenance given to the acetate, is that Designers Guild has convincingly discharged the burden of proving that Russell
Williams copied Ixia.

55) I therefore reject Mrs Williams' evidence that she was unaware of the Ixia design. I do not have to decide how she obtained it: she
might have first seen it in September 1995 at the Decorex exhibition and subsequently obtained samples from the department stores:
she attended the exhibition, but in her witness statement she said she did not recall seeing Ixia. As Mr Halsey said, it is most
exhibitors' normal practice to look around other stands. Mrs Williams had, with four designers, created 200 designs, in the relatively
short period of 5 years, including 95 with Miss Ibbotson from 1994. Common sense compels the conclusion that she would keep an
eye on new designs by market leaders and competitors. Miss Ibbotson denied any knowledge of Ixia when she designed
Marguerite: but Mrs Williams played an obviously major role in the design process by giving instructions to Miss Ibbotson, and
making design modifications, and it is not necessary for me to express a concluded view on Miss Ibbotson's knowledge.

Paint marks and smudges

56) It is therefore not strictly necessary to go into the matter of the red and white paint marks on the front of the striped artwork, and
green marks on the side and back. The green marks are of doubtful significance, and I shall deal in this section only with the red and
white marks. It was submitted by Designers Guild that the only explanation for these marks is that they came from fresh paint from
the acetate, and consequently that the striped artwork and the acetate are contemporaneous; and that therefore Mrs Williams and Miss
Ibbotson could not have been telling the truth about the origin of the acetate and the striped artwork.
57) There is no trace of any extraneous white, red or green paint on Open Cherry Blossom, and if the acetate was painted by
placing it over Open Cherry Blossom then Miss Ibbotson must have taken some care not to have allowed the paint from the acetate
to get on to Open Cherry Blossom. But there is a mark of red paint at the top right hand corner of the acetate and a mark at the
corresponding place on the striped artwork. Neither of these marks shows any sign of smudging. There is also what appears to be a
trace of white paint along the left hand side of the striped artwork corresponding to a place where there had been (but no longer is,
because of usage of the acetate) a white flower on the acetate. There is also green paint on the back of the striped artwork, and what
appears to be green paint on the side of the artwork.

58) These marks were raised for the first time at the trial, in the cross-examination of Miss Ibbotson. Mr Alastair Wilson QC told me
that the marks had been noticed at a consultation shortly before the trial, and that a deliberate decision had been made to take Russell
Williams' witnesses by surprise.

59) Miss Ibbotson gave evidence that she had mixed the red paint for the shade she wanted, and (both in cross-examination and re-
examination) that the red on the acetate and the striped artwork were the same. It was put to her that the red mark on the striped
acetate looked like a piece of solid paint which had crept across at the time the acetate was painted on top, that a paint brush had
slipped down the side of the acetate and had moved across on to the stripe; and that the acetate was painted after the striped artwork.
She replied " ...I cannot explain why the red is on the front". It was later put to her that white marks down the side of the striped
artwork were paint from the acetate flowers in the corresponding position: she did not accept that it was a paint brush mark.

60) Mr Reynolds gave evidence about the separation process. In his witness statement he explained that the basic separation process
involves laying a sheet of drafting film over the artwork (a separate sheet being used in relation to each colour which will be printed).
The sections of the design which will appear in the relevant colour are then painted onto the film using the technique which best suits
the feel of the original artwork. The Marguerite design required the majority of the design to be painted in a watery "wash" style.
Following the painting of the drafting film a sheet of magenta rasta film is then placed over the drafting film and a piece of
photographic film is then placed over the magenta rasta. This "sandwich" is then exposed to light to produce a negative. This
procedure is carried out for each individual colour separation. This procedure converts the tones of acropaque to tones made up of
minute dots via the rasta film. The negative is then flashed back onto photographic film to achieve a positive. This positive is then
exposed onto a screen (with one separation per colour per screen) from which the final fabric is printed.

61) In examination in chief he said that unless the making of exposures is a wet process, in that the screens are stripped and coated
with emulsion and dried, and the operator must wash the screens by hand (without gloves). He was asked to look at the marks on the
striped artwork:

"Q First of all, are there any observations you make about that red blob based on your own
knowledge and experience?
A No, I cannot.
Q Do you see any brush strokes in the portion of the red blob which is said to have been carried
over?
A It is purely a mark. I could not say whether it is a brush stroke or not ...
Q Are you surprised to see it there in that way?
A No
...
Q Can you look, either without the aid of the magnifying glass of with the aid of the magnifying
glass, and tell my Lord what you observe there [at the top of the striped artwork]
A There is some kind of white mark.
Q You say white mark. You will have heard my learned friend, just now. Mr Learned friend puts
the proposition that that is paint. Can you shed any light on that one way or the other?
A I am afraid I cannot.
Q Try really hard, please.
A (After a pause) It looks like some sort of smudge, but I could not say for certain.
Q Now, I have drawn your attention to a red blob; I have drawn your attention to a green mark;
and I have drawn your attention to the mark you were just looking at now. Will you please
consider this question and give my Lord your answer. If the striped artwork (and I am referring
to the cartridge paper) had arrived at Sunderland & Wild without those marks on it -- do you
understand the frame of reference to my question?
A Yes.
Q Would it surprise you to find that it had left your premises with such marks on it?
A No.
Q Can you tell my Lord why it would not surprise you to find that it had left your premises with
such marks on it?
A Purely because of the handling of the artwork during the processes that it goes through from
beginning to end.
Q I would like you to elaborate this because I think believe it is a point that may be considerably
important point?
A From the process of separation through to printed mini and subsequent colour ways.
Q Can you help us to understand precisely how those marks you have just looked at could occur
on your premises, precisely how, please?
A It could happen purely by handling of the artwork in processes. It is a design and it needs to be
handled to be separated.
Q How tenacious, if that is the right word, is the paint that you see on the acetate?
A It is very unstable on acetate.
Q What do you mean by unstable?
A The slightest amount of moisture tends to lift the paint acetate or flaking of the design will ---
Q When you say slightest amount of moisture, how slight is slight?
 A A damp hand could remove the paint.
Q Are your hands damp at the moment?
A Slightly, yes.
Q Is that the degree of dampness you are talking about?
A Yes".

62) In cross-examination he was asked:

"Q You say that it is not surprising for bits of the ink of artwork to get smudged elsewhere on the
artwork?
A Yes.
Q You have encountered that sort of thing before, no doubt?
A Yes.
Q In this particular case, the particular smudges to which we draw attention on the front of the
artwork ---
A Yes.
Q There are two of them, which I think you have look at through the magnifying glass.
A Yes.
Q Those are both right next to the corresponding colour on the acetate. Do you see that?
A Yes.
Q Generally speaking, if somebody foolishly picks up a bit of paint on his finger and gets the
paint on it, he could put it down anywhere on the artwork when he handles ---
A Yes, but you could also smudge it without knowing you have smudged it, just by handling it
and turning of the artwork.
Q Than may be, but the red dot does not look as if it has ever been smudged, does it?
A It could have been smudged.
Q It is unlikely, is it not, because it has been covered with Sellotape, and the changes are it had
been covered with Sellotape throughout the procedure?
A It could have been. It could have also not been covered with the Sellotape.
..."

63) To a lay view, the presence of red marks at the top of the striped artwork and the white paint at the side makes it probable that the
red and white paint marks were transferred from the acetate to the striped artwork while the acetate paint was still fresh: Miss
 Ibbotson twice accepted that the shade of red was the same. Mr Reynolds' account of how the paint could have been transferred would
be consistent with smudge marks, but is very hard to reconcile with the actual state of the paint marks.

64) Mr Alastair Wilson QC's submissions left some very important questions unanswered: if the acetate was painted at the same time
as the striped artwork, how was Miss Ibbotson able, on the acetate, to track the shapes of the stalks and leaves from Open Cherry
Blossom without getting paint on Open Cherry Blossom? If there is white paint from the acetate on the side of the striped artwork,
how could the striped artwork have been bleached subsequently (as it was on Miss Ibbotson's account) without removing the white
paint? If the acetate was painted after the striped artwork had there been an intermediate painted acetate which was projected to
bleach the striped artwork? The answers to these questions would be entirely speculative.

65) If the provenance of the marks on the striped artwork had been central to this case, there would no doubt have been expert
evidence on whether the paint on the acetate and the striped artwork was identical, and more elaborate evidence on whether it was
possible for the paint on the acetate to have been transferred to the striped artwork in the course of the colour separation process and
with what effect. The late stage at which, and the manner in which, the marks and smudges were treated meant that they had to be
dealt with in a somewhat superficial way. Since I have already come to a clear conclusion that, irrespective of the marks and smudges,
the acetate and striped artwork were created together, I will say no more than that on the present state of the evidence I would have
regarded the red mark as a relatively minor piece of evidence tending to support that conclusion.

Osborne & Little

66) Shortly before this action came to trial, Designers Guild received documents from the wallpaper and fabric designers, Osborne &
Little plc, who had in October 1996 through their solicitors complained to Russell Williams about alleged copying of one of their
designs (Secret Garden) by Russell Williams in their Bowood design. In November 1996 Russell Williams made a modest payment
to Osborne & Little, and gave an undertaking not to use the design again. In a written judgment handed down on 18th November
1997 I decided that evidence of the Osborne & Little episode would be admissible as similar fact evidence (on the assumption that the
facts might turn out to be similar) and that Russell Williams' witnesses could be cross-examined on it.

67) The potential relevance of this episode is that if the court is satisfied that Russell Williams copied the Osborne & Little Secret
Garden design at around the same time as it is alleged to have copied the Designers Guild Ixia, and if there are parallels in its modus
operandi, the episode might be relevant in assessing the credibility of the denial that it had copied Ixia. Further, if the evidence of the
witnesses on the Osborne & Little episode were unsatisfactory or incredible that too may throw light on the credibility of their denial
of copying Ixia.

68) There is no serious question about Osborne & Little's copyright in Secret Garden. When Russell Williams gave undertakings to
Osborne & Little on 28th November 1996, one of them was not to produce any fabric in the future which might infringe Osborne &
Little's copyright in the drawings reproduced in the Secret Garden range.

69) Nor is there any serious question about similarity. Each fabric has a design of topiary trees. In each case the trees are cut as trees,
and not (as one sometimes finds) into novelty shapes such as animals. In each case there are some seven shapes of trees, with a broad
correspondence. Each fabric has a geometric design. In Secret Garden it is a border design plainly depicted as a maze looked at
from above, showing the tops of topiary trees in the centre of the pattern. In Bowood, the geometric pattern is repeated across the
fabric, and although it has the effect of a maze, each section is closed off: within alternating sections there is the top of a tree to give
the effect of it being looked at from above, but in the other of the pair of sections there is a simple topiary tree depicted from the front,
which has no direct counterpart in Secret Garden. In each fabric the painting style is similar, and the size and spacing of the trees is
very similar; in each design there is shading on the left of the trees to give the effect of the sun shining from the right. In each fabric
the trunk of the tree shows, together with roots protruding from the trunks. Although (as Miss Ibbotson and Mrs Williams were quick
to point out) all trees have trunks and roots, topiary trees do not necessarily have visible trunks, still less visible roots, and a visual
representation of a topiary tree does not have to show either trunks or roots. Similarly although mazes may be found with topiary trees
nearby, there is no necessary connection between topiary trees and mazes and they are not inevitably, or perhaps not even naturally,
associated with each other.

70) On accessibility or opportunity to copy, it was said in the letter from Linklaters & Paines that the Osborne & Little design had
been on the market since 1993. Miss Ibbotson and Mrs Williams both said in evidence that they were aware of the Secret Garden
design, although Mrs Williams said she had seen it only from photographs and was not aware of the maze effect on the border.

71) The account by Miss Ibbotson and Mrs Williams of the origin of the Bowood design is as follows: according to Miss Ibbotson,
when she attended the Heimtextil exhibition in Frankfurt in January 1996 Mrs Williams showed her a magazine supplement with a
topiary design by Waverly, showing topiary trees in various shapes, which Mrs Williams said she liked; the two of them had a general
discussion about whether the design idea was popular. About a month later, when Miss Ibbotson was in the Russell Williams shop in
Cardiff, she was given a brief to produce a topiary design. In the course of producing the design she looked at various magazines with
articles on gardens and country houses with topiary. She added: "I was also aware of a design by Osborne & Little that had the topiary
trees on it". But at the time of designing Bowood she did not have a cutting of Secret Garden or find it in a magazine. She used
Rose, Traditional Garden Book, pp.100-101, as the reference source for the topiary trees in Bowood, and produced a layout of
trees, the shape of three of which were softened on Mrs Williams' instructions. Mrs Williams gave evidence that she too looked at this
book and did not like the novelty trees. Subsequently Miss Ibbotson painted, at the end of February or at the beginning of March
1996, the Bowood design. Her evidence was that she discussed the painting technique (in particular not to use a stencil effect) with
Mrs Williams, but Mrs Williams at first denied that she had discussed the painting technique with Miss Ibbotson; and when it was put
to her that Miss Ibbotson had said that they had discussed it, Mrs Williams said she did not recall it. Bowood went into production in
April 1996.

72) But the trees in the Bowood design are much closer to Secret Garden than to those in the Rose book. In both Bowood and
Secret Garden the trees are depicted with a darker shaded side on the left, to give the impression of the sun shining from the right (a
feature which does not occur in Rose, nor does it appear in the Waverly design). In each case the trees have clearly depicted trunks:
this feature is not shown in the Rose book although it does occur in the Waverly design in rather different proportions. In each case
the trees have roots depicted as they can sometime be seen in real trees above the ground: this feature does not occur in the Rose
book, although it can just be seen in the Waverly design. Mrs Williams was referred to five trees in Secret Garden and confirmed
that they were similar to those in Bowood.
73) Their account of the origin of the geometric shapes is that when Miss Ibbotson went to see Mrs Williams in Cardiff in February
1996, they (together with their husbands) had lunch at an hotel, where Mrs Williams had seen on the ceiling a moulded pattern design
which she liked and though could be used on the design to give the effect of a maze. Miss Ibbotson's husband took a photograph of
the ceiling pattern, and this pattern formed the basis of the geometric design with a maze effect.

74) When asked if Osborne & Little came up in the initial conversation with Mrs Williams in Frankfurt, Miss Ibbotson answered "Not
that I recall". Although she was aware of the Secret Garden design, she said that she did not refer to any sample or photograph. Mrs
Williams said "I was aware of the [Secret Garden] design but, no, it was not an attempt to copy this design". When asked whether
what she was saying was that the similarities were coincidental she replied; "Yes, I suppose so". But when she was pressed on the
similarity between the Bowood maze and the Secret Garden maze Mrs Williams said she had not seen the Secret Garden maze,
because she had only seen the Secret Garden fabric in photographs and did not recall the maze.

75) When the Linklaters & Paines letter was received 8,000 metres of Bowood had been produced, of which only about 750 metres
was unsold, and there were orders for reprints outstanding. When Mrs Williams received the letter she and her husband consulted
their solicitor in Manchester, who "felt that, especially as we had already received the letter from Designers Guild, that this was a
really difficult situation". They then reached what Mrs Williams described as a commercial settlement on the basis of paying Osborne
& Little the costs of instructing Linklaters & Paines. They did not pay any compensation for the 7,000 metres sold, and delivered up
the remaining stock. The settlement was a commercial decision and Mrs Williams said she believed that there had been no copyright
infringement. In cross-examination Mrs Williams accepted that the settlement had cost an additional £5,000 or so, of lost investment
(design and colour separate costs, value of stock delivered up), but overall it is likely that the Osborne & Little episode resulted in
neither a significant profit or loss for Russell Williams.

76) One of the peculiarities of Mrs Williams' reaction to the Linklaters & Paines letter is that she did not at once raise it with Miss
Ibbotson, who had designed Bowood. Mrs Williams made the commercial decision to settle before discussing the claim with Miss
Ibbotson. It seems that Mrs Williams referred Miss Ibbotson to the solicitor about two weeks after the letter before action.

77) In my judgment Miss Ibbotson and Mrs Williams were deliberately creating a design modelled on the Osborne & Little design.
Each said that she was aware of Secret Garden, although Mrs Williams, when pressed on the similarity of the maze effect, said she
had seen the design only in photographs and did not recall the maze. Each denied copying, and Mrs Williams claimed that the
similarities were simply a coincidence. Their evidence was wholly unconvincing, and the use of the Rose book and the motif in the
Cardiff hotel was simply the use of external sources as a cover for copying the Osborne & Little design. The trees look much more
like Secret Garden than those in the Rose book (or the Waverly design): the trees selected from the book are the ones most like the
Secret Garden trees, including a spiral in the original draft - the one in Miss Ibbotson's draft which does not have a clear Secret
Garden counterpart (the one with a square effect) was modified by Mrs Williams in a way it makes it closer to Secret Garden. The
size and spacing of the trees in the two designs is similar. In each case there is a left side in shadow, a feature not found in the Rose
book (or in the Waverly design). The depiction of the feet of the trees in the two designs is strikingly similar: the similarity cannot be
explained by Miss Ibbotson's "As trees do" answer or by Mrs Williams' "Trees have roots" answer. The Rose book trees have no such
trunks or roots, and the feet of those trees which have a trunk or root motif in the Waverly design are quite different. As the Waverly
design illustrates, there is no necessary connection between topiary trees and mazes and yet Mrs Williams, who claimed not to recall
 the Secret Garden border, wanted a maze effect, which she obtained in a form which is not only very similar to Secret Garden, but
also has an almost identical ball-like feature of the top of a topiary tree being looked on from above. The style of painting in the two
designs is very similar in appearance, and Mrs Williams tried to deny that she had participated in discussions about it. I also infer that
Mrs Williams knew that she had been guilty of copying from the fact that she did not at once get in touch with Miss Ibbotson when
the Linklaters & Paines letter was received; that it was about two weeks before Miss Ibbotson was in touch with the solicitor; that the
solicitor had negotiated a settlement agreement within four weeks of the letter from Linklaters & Paines (although it was not signed
for a further two or three weeks after that).

78) This episode is relevant to this action, not because copying in one case is in itself evidence of copying in another case, but
because (as Mr Wilson QC submitted) this episode shows: (1) Mrs Williams plays a major design role; (2) together Mrs Williams and
Miss Ibbotson are capable of devising designs which are substantially similar to those of market leaders; (3) they claim independent
derivation in situations where their design has very little similarity to the claimed source and very great similarity to the copyright
material, which they dismiss as mere coincidence. If it were necessary to rely on this material (which it is not) I would have no
hesitation in deciding that the conduct of the Osborne & Little episode itself, and the evidence about it given at trial, would provide
very strong support for a conclusion that Mrs Williams and Miss Ibbotson were engaged on a similar exercise in relation to Ixia.

Substantial copying

79) The final question is whether, if there has been copying, there has been copying of a substantial part. Mr Geoffrey Hobbs QC, for
Russell Williams, in a vigorous and eloquent closing, argued that because there was no allegation of infringement in the Marguerite
muslin design, there was no allegation of infringement in copying the flowers. It followed, he argued, that the claim must be made in
relation to the combination in Ixia of stripes and flowers to form a coherent whole; to treat the flowers on the muslin as non-
infringing was to release the claim for infringement on substantial part in relation to the floral trail. Secondly, he argued that Miss
Burke had been very strongly influenced by the Matisse tablecloth and flowers, and that when assessing the question of substantial
part, the court must ask itself whether that which has been taken was original to the artist whose work was thought to be protected. He
accepted that there was copyright in the protected work, but the question of whether a substantial part had been taken related to
whether a substantial part of the end product of the labour of the individual artist had been adopted, and it was not to be answered by
going back to broad general conceptions of "handwriting". Since there was no claim that the floral arrangement on Marguerite was
an infringement, and since the colour scheme of the striped artwork was entirely different from Ixia, it could not be intended to be a
reproduction of the protected copyright work. The striped feature of the protected copyright work came more or less from the
tablecloth painted by Matisse, and neither geometrically nor in terms of colour could it possible be said that the striped artwork had
been taken from Ixia. The Designers Guild case was nothing more than that Russell Williams could not take a floral arrangement
which was innocuous and put it on stripes which were innocuous. Further, it had not been put to the witnesses that the adoption of the
Ixia colourways, between October 1995 and March 1996, had been an infringement. If it was to be said that the pink colourway was
introduced by way of supervening infringement, the court was free to decide that the three other colourways were not the subject of
infringing adoption.

80) In my judgment there has been copying of a substantial part. As was made clear in Ladbroke (Football) Ltd v William Hill
(Football) Ltd [1964] 1 WLR 273 at 277, it is not right to dissect the work of the plaintiff and ask if each part separately could be
protected if it stood by itself. The whole work has to be looked at to determine whether the alleged infringing material has adopted the
 essential features and substance of the original. The right approach is to look at the end result of the acetate, the striped artwork, the
modifications made by Mrs Williams (especially making the stripes less harsh) and her selection of colourways, and the printed
fabric. That end result is an infringement of the painting on which Ixia was based. It is the combination of the flowers and the stripes,
the way in which they related to each other, the way in which they were painted, and the way in which there was a "resist" effect
which makes the overall combination the copying of a substantial part. The fact that the pink colourways bear the closest resemblance
to each other does not mean that only the pink Marguerite infringes copyright. It is the design which was copied and has been
reproduced.

Conclusion

81) I therefore find that Russell Williams has infringed the copyright in the painting from which Ixia was developed: (1)
by copying it in a fabric in several colourways with a design (Marguerite) which is a reproduction of a substantial part
of the painting: (2) by issuing the copies to the public; and (3) by possessing infringing copies in the course of business,
selling, offering or exposing them for sale, and in the course of a business exhibiting them or distributing them (see 1988
Act, sections 16 to 18 and 23). If the terms of the consequential relief or form of the order cannot be agreed, I will hear
argument.

Images

© 1998 Crown Copyright

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