Designers Guild LTD V Russell Williams (Textiles) LTD (Ta Washington DC)

AGYEI, DOREEN 1/23/2024
For Educational Use Only
Designers Guild Ltd v Russell Williams (Textiles) Ltd (t/a..., 1998 WL 1076661...
trades as Washington DC (“Russell Williams”), was

established in 1974. Initially it was a wholesaler of
Designers Guild Limited v. Russell Williams (Textiles) fabrics, but in 1982 began to sell, in addition, through
Limited (T/A Washington D.C.) its own shops, as a retailer. At that stage it did not
CH 1996 D No. 8007 design or manufacture its own fabrics, but in order to
High Court of Justice Chancery Division be able to sell exclusive ranges of fabrics it decided to
14 January 1998 develop its own ranges, and in the last five years or so
it has developed some 200 different designs produced
1998 WL 1076661 in conjunction with about 4 designers.
Before Lawrence Collins QC sitting as a Deputy Judge In September 1995 Designers Guild launched a new
Dated: 14th January 1998 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
Analysis 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
Hearing dates: 17th – 20th November 1997
flowers, also in a somewhat impressionistic style.
Representation Designers Guild took the view that the Russell

Williams design Marguerite had been copied from its
• Alastair Wilson QC and Michael Hicks (instructed Ixia , and, after correspondence, commenced these
by Taylors ) for the Plaintiff. proceedings on 24th December 1996. The Ixia fabric
• Geoffrey Hobbs QC and Iain Purvis (instructed by was produced from a design painted by Helen Burke, a
Addleshaw Booth & Co ) for the Defendant. designer employed by Designers Guild, and in this
action Designers Guild claims that Russell Williams
has infringed its copyright in the painting by copying
Judgment the Ixia design and incorporating it in its Marguerite
Mr Lawrence Collins QC 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
Introduction purposes of sections 16 and 17 of the Copyright,
Designs and Patents Act 1988 (“the 1988 Act”),
The plaintiff is the designer and manufacturer of Russell Williams has copied from the Ixia design and
fabrics and wallpapers, Designers Guild Ltd thereby indirectly copied a substantial part of the
(“Designers Guild”). It was established by Tricia painting.
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 Dramatis personae
also commissions designs from free-lance designers. It
has a retail shop in Kings Road, Chelsea. The At the trial I heard evidence from the following:
defendant, Russell Williams (Textiles) Ltd, which
© 2024 Thomson Reuters. 1

Simon Jeffreys: van Aerssen samples of the

Marguerite fabric at the Utrecht
Mr Jeffreys, who joined Designers exhibition.
Guild about 10 years ago, is its
chief executive.
Victor Herbert:
Helen Burke: Mr Herbert, the expert witness for

Designers Guild, has worked as a
Miss Burke, who painted the design consultant for more than 30
design from which Ixia was years.
produced, was employed by
Designers Guild as a textile
designer from September 1992
until the end of 1995. Jane Ibbotson:
Miss Ibbotson has been a designer

for 16 years, and has worked on a
Christopher Halsey: free-lance basis with Russell
Williams since 1994, and has since
Mr Halsey has been in the designed some 95 different fabrics
furnishing textile industry since for it. Her husband was present at
1963, and worked with Designers one of the meetings referred to later
Guild since it was established in in this judgment. She, with Mrs
1970, and is now its product Williams, developed the
development and quality director. Marguerite design.
Wilhelmine van Aerssen: Aileen Williams:
Mrs van Aerssen, together with her Mrs Williams has been a director
husband Paul Borghaerts, runs of Russell Williams since it was
Wilhelmine van Aerssen established in 1974, and she works
Agenturen, Amsterdam (the Dutch with designers in the design and
agents of Designers Guild), who subsequent development of textiles
were exhibiting at the Utrecht sold by Russell Williams. Her
exhibition in September 1996. husband, Colin Williams, is also a
director.
Gijs Bertus Van Eijsden:

Lee Reynolds:
Mr van Eijsden is a director of
Housestyle Interiors, a Dutch Mr Reynolds has, since 1986, been
customer of Mrs van Aerssen’s the design director of Sunderland
company, who obtained for Mrs & Wild Screen Prints Ltd, which
since 1994 has carried out a large strongly influenced by what she had seen of the
amount of business with Russell tablecloths and flowers in the Elderfield book, she
Williams, primarily in preparing accepted it in the case of the tablecloth, but “not
the colour separations to prepare particularly the flowers”.
screens for textile printing,
including those prepared for Mr Geoffrey Hobbs QC, for Russell Williams, drew
Marguerite . 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
Origin of Ixia design plate 258, but accepted in the course of cross-
examination that that was chosen as an example only.
The design was created in 1994 by Helen Burke. She Mr Hobbs’ purpose was (inter alia) to lay the
and another designer were given a design brief by groundwork for his argument that in determining
Tricia Guild for the spring/summer 1995 collection. whether a substantial part of the copyright work had
Tricia Guild wanted a floral collection in a style which been copied the court should, in his words, “make a
would seem loose and hand-painted, with brush mental subtraction to allow for the derivation of the
strokes. Tricia Guild showed the designers two books work”. The witness statement was perhaps not prepared
on Matisse, and together they went through them for as carefully as it could have been, but I do not accept
about an hour, to exchange ideas for designs based on that there was a deliberate attempt to enhance the
the “handwriting” or style and colour and influence of originality of Miss Burke’s design. She was, in my
Matisse. Miss Burke’s evidence was that the collection judgment, a reliable and spontaneously frank witness. I
would not be a Matisse collection as such, but one accept her evidence that she was not particularly
inspired by the “handwriting and feel” of Matisse. influenced by the Matisse flowers. Although there is a
clear influence of the table cloth stripes, the Matisse
The books which they went through were Elderfield, A flowers do not bear a marked resemblance to those in
Matisse Retrospective , and, according to Miss Burke’s her design: hers are distinctly more impressionistic.
recollection, a book called Matisse in Morocco . In her
witness statement Miss Burke said that plate 258 (a The remainder of Miss Burke’s account of the
1924 painting) from the Elderfield book was her only development of the design was not challenged. She
source reference. That plate showed a tablecloth with a prepared a number of acrylic-painted drafts, which
very bold stripe which she said she used to create a were discussed with Tricia Guild and with the studio
similar effect in Ixia , along the lines of a strong but manager, Claire Brett. Her early drafts had small
also delicate design. In cross-examination she was bouquets of flowers, but after she told Tricia Guild that
taken to a number of other plates of Matisse paintings this was too “twee” and too busy, they decided that the
from the 1920s in the book (especially plates 248 and flowers should be simplified and be scattered across the
249) with striped tablecloths, and she accepted that in design to make it more open and free.
her statement she had included plate 258 simply as one
example as a point of reference, and she also accepted The initial yellow flower which she used was changed
that she had not based herself solely on that plate. She to white because it gave a more fragile impression to
was also shown plates (especially plate 257) with the design, worked well on the stripe, and did not
flowers which she accepted were similar to those on “fight” with the colour. She wanted to break up the
her design, and when asked whether she had been stripe as well, and used an acrylic paint to create a
translucent and delicate feel, her objective being to position with Mr Halsey, the product development and
have the flowers stand out from the stripe, but not too quality director, who himself had similar concerns
boldly. She did not want the flower or the design to about the Russell Williams design, which he had seen
look “hard”, and she tried to balance this stripe and at the TIP exhibition in Brussels earlier that month.
flower between a bold, coloured design but also soft at
the edges, which is why she adopted a hand brush On 1st October 1996 solicitors for Designers Guild
stroke technique. To contrast and at the same time wrote a letter before action to Russell Williams,
complement the stripe, she used the white flowers in a complaining that Marguerite was an infringement of
delicate and hand brushed two tone petal, almost Designers Guild’s copyright in Ixia . The substantive
transparent or opaque over the top of the stripe to give reply from the solicitors for Russell Williams on 4th
the impression of a three dimensional depth. The October 1996 was as follows: they did not consider that
painting of the final design took her about one full day. the two designs were similar, and rejected the
contention that they had been copying; their
instructions were that the Russell Williams design
Background to proceedings originated from a piece of original art work made by
Jane Ibbotson, which followed an open leaf motif often
Miss Burke produced 10 or 12 colourways, and Tricia used in depictions of Chinese cherry blossom trees; that
Guild selected three: pink, blue, and turquoise. The design had been taken in two directions, one of which
design was approved by the Designers Guild board for was a closed cherry blossom design and which was not
inclusion in the 1995 “Orientalis” collection. Pattern relevant, and the second in the direction of what
(or sample, or swatch) books of the collection were became Marguerite ; the original art work for that was
distributed to the Designers Guild’s wholesale and made in or about October 1995, and was not produced
retail customers from August 1995, and the range in the original colourways except for the flower
(including Ixia ) went on open sale at its shop in Kings overlays, and the colorations were made subsequently
Road, Chelsea, London, on 1st September 1995. The by Mrs Williams. The letter went on as follows:–
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 “This design followed very closely
£171,000. upon a very successful muslin
design, a sample of which is
On 15th September 1996, Mr Jeffreys, the chief enclosed herewith. The abiding
executive, was telephoned from the Utrecht exhibition feature of that design was a closed
by Mr Paul Borghaerts, who with his wife, Wilhelmine daisy on a plain coloured lined
van Aerssen, has a business which (as I have said) acts background which is apparent from
as the Designers Guild Dutch agent, and who were the sample enclosed. Our clients
exhibiting at Utrecht. The essence of the conversation were anxious to reproduce a series
was that Mr Borghaerts and his wife were concerned of fabrics with a muslin and which
because a number of their customers and members of built upon the success of their own
the press had approached them to say that copies of collection. The daisy collection to
Designers Guild designs had been seen on other which your clients can have no
exhibitors’ stands. Mr Jeffreys went to Utrecht, and one complaint, was made in January
of the stands he visited (together with a Dutch lawyer) 1995 and first sold in April 1995.
was that of Home Sweet Home, the Dutch distributor One of the reasons for the change
for Russell Williams. He took the view that a fabric to the open flower design was that
being exhibited there ( Marguerite ) was a copy of on the darker fabrics which were
Ixia . When he returned to England he discussed the later added to the collection the

background of the cloth tended to themselves

print through. This has been are faded and
avoided in our client’s less
“Marguerite” design. The prominent,
overwhelming features of the and the leaf
Marguerite design as is apparent sizes being
are a number of broad stripes which different.
are of a painted on effect which is The stamens
popular and relatively common do not
amongst a number of cloth appear on all
manufacturers. There is the flowers
superimposed the flower which is and are again
very deliberately either four petals less
or three petals with different prominent
coloured stamens. A considerable than our
amount of the leaf which dates client’s
back to the original Open Cherry design. Of
Blossom design is apparent on the the three
fabric. Save for the pink and white colourways
(which is a very different shade we have
from your client’s red) and the seen, the
colourways have no resemblance in stamens also
colour, the overall feel and visual are in the
effect is different and those same
differences can be summarised as principal
follows:– colour and
not
contrasting.
These
Your client’s differences
design is of are not
a narrow surprising as
stripe on our
repeating instructions
across the our client’s
fabric. It work is
conveys a independentl
totally y
different originated.”
impression.
The amount
of leaf is
limited and
is abstract
rather than
definite. The
flowers

work and the alleged infringement,

The letter did not state that either Miss Ibbotson or Mrs but there is no copyright in a mere
Williams was unaware of the Ixia design when idea: e.g. Ladbroke (Football) Ltd v
Marguerit e was developed. The letter gives the William Hill (Football) Ltd [1964]
impression that Marguerite was in some way 1 WLR 273 , 287 (H.L.), per Lord
influenced by the “Daisy” design: but in the course of Hodson; LB (Plastics) Ltd v Swish
the proceedings it emerged that all that was being said Products Ltd [1979] RPC 551 , 619
was that Mrs Williams wanted to repeat the success of (H.L.), per Lord Wilberforce.
a floral design which would work both on cloth and on
muslin.
3.3. The degree of resemblance
A writ was issued on 24th December 1996, and the required has been said not to be
statement of claim was served on 8th January 1997. In merely a similarity or resemblance
the defence served on 16th January 1997 no admissions in some leading feature or in
were made as to the origination, ownership or certain of the details but, the idea
subsistence of copyright by Designers Guild. On 20th and general effect created by the
June 1997 Designers Guild’s solicitors served a notice original being kept in mind, a
to admit the fact (inter alia) that Designers Guild was degree of similarity as would lead
the owner of the copyright in the original artistic work, to the conclusion that alleged
and in the amended defence served on 11th November infringement is a copy or
1997 Russell Williams admitted subsistence and reproduction of the original, having
ownership of copyright in the painting. adopted “its essential features and
substance”: Hanfstaengl v Baines
[1895] A.C. 20 ,31, per Lord
Applicable principles Shand.
The principles to be derived from the cases cited to me

may be summarised as follows: 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
1.1. The protection given by the
cannot be: a wrong result can be
law of copyright is against copying,
reached by dissecting the plaintiff’s
the basis of the protection being
work and asking if each part
that one person must not be
separately could be protected if it
permitted to appropriate the result
stood by itself: if sufficient skill
of another’s labour; it is for the
and judgment have been exercised
plaintiff to establish and prove as a
in devising the arrangement of the
matter of fact that copying has
whole work that can be an
taken place: LB (Plastics) Ltd v
important or even decisive element
Swish Products Ltd [1979] RPC
in deciding whether the work as a
551 , 619 (H.L.), per Lord
whole is protected by copyright:
Wilberforce.
Ladbroke (Football) Ltd v William
Hill (Football) Ltd [1964] 1 WLR
at 277, per Lord Reid.
2.2. There must be a sufficient
resemblance between the copyright

5.5. If part of the plaintiff’s work which the party charged may refute
has been copied, there will be an by evidence that, notwithstanding
infringement if a “substantial part” the similarity, there was no copying
has been taken (1988 Act, s.16(3) but independent creation: ibid at
(a) ), and for this purpose whether 625, per Lord Hailsham of St
what has been copied is a Marylebone, citing King Features
substantial part depends much more Syndicate Inc. v O&M Kleeman
on the quality than on the quantity Ltd [1941] AC 417 , 436, per Lord
of what has been taken, or more on Wright.
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.
Expert evidence
6.6. There must be a causal
Designers Guild submitted expert evidence from Mr
connection between the copyright
Herbert that Ixia and Marguerite were similar and also
work and any infringing work;
that Russell Williams had copied the Ixia design, and
infringement may be negatived by
Mr Halsey, relying on his long experience in the
acceptable evidence of independent
industry, gave evidence not only of similarity but also
design, and copying may not be an
expressed the opinion that Russell Williams had
infringement if it fails to create a
reproduced substantial elements of the Ixia design.
sufficient resemblance to amount to
a reproduction: Billhöfer
Although it has been accepted that expert evidence may
Maschinenfabrik GmbH v TH
be called to point out similarities or coincidences to
Dixon & Co Ltd [1990] FSR 105 ,
support the contention of copying (see Laddie, Prescott
107, per Hoffmann J.
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
7.7. There is no infringement if a
the defendant’s work is a copy is a question for the
person arrives by independent work
court and one on which an expert’s opinion would not
at a substantially similar result to
be admissible: ibid . That is because of the traditional
that sought to be protected; but the
view that normally expert evidence on the ultimate or
beginning of the necessary proof of
real issue in the case is not admissible. But it has now
copying normally lies in the
been recognised (in contexts other than copyright
establishment of similarity
infringement: but the principle is the same) that a
combined with proof of access to
change has been effected by the Civil Evidence Act
the plaintiff’s productions: LB
1972, section 3 , which provides:
(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 “(1) …where a person is called as
defendant of the evidential burden, a witness in any civil proceedings,
i.e. prima facie evidence of copying his opinion on any relevant matter
on which he is qualified to give was shown to him, he would not change; and that he
expert evidence shall be admissible was in effect an advocate for the Designers Guild
in evidence. 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
(3) In this section ‘relevant matter’ provided for service of his expert report at the same
includes an issue in the time as exchange of witness statements. I reject Mr
proceedings.” 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.
Mr Halsey was not put forward as an expert witness:

but his evidence, based on his long experience in the
In Re M and R (minors) [1996] 4 All ER 239 , 249-254 industry, was given, and he was cross-examined on it.
(C.A.) it was held (treating dicta to the contrary in He did not claim any expertise which he did not have.
previous judgments as per incuriam ) that the effect of He too was a careful and helpful witness.
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 Similarity
Reform Committee on Evidence of Opinion and Expert
Evidence that “a statement by an expert witness … In this action the relevant copyright work is the artwork
shall not be inadmissible upon the ground only that it or painting produced by Miss Burke in 1994. All of
expressed his opinion on the issue in the proceedings Designers Guild’s witnesses, including their expert,
… ”. But the Court of Appeal emphasised that the concentrated on similarities between the Ixia fabric and
judge should never lose sight of the central truths that the Marguerite fabric: that is of course because the real
the ultimate decision is for the court and that all complaint, in commercial terms, is that Russell
questions of relevance and weight are for the court: at Williams copied the Designers Guild fabric design.
253-4, per Butler-Sloss L.J. In Routestone Ltd v Since it cannot be suggested that Russell Williams had
Minories Finance Ltd (1997) 21 EG 148 , decided a access to the artwork, the case is one of alleged indirect
few days before, Jacob J came to a very similar copying. A comparison between the two fabric designs
conclusion. is a legitimate starting point on similarity, provided that
any material differences between the artwork and the
I shall deal later with the expert evidence on similarity fabric are taken into account. The main differences are
and copying, and the limited extent to which it is that in the fabric the stripes are slightly wider, and the
useful. But this would be a convenient point to mention flowers are smaller and more numerous, than in the
the qualifications of Mr Herbert and Mr Halsey. Mr artwork. These are not, in my judgment, material
Herbert has worked as a design consultant for more differences.
than 30 years; and he has been both a garment and
fabric designer. Mr Halsey has had more than 30 years Three colourways of Ixia were produced: pink, blue
experience in the selection and production process for and turquoise. Four colourways of Marguerite were
textile and wallpaper design. produced: pink, blue, green and lemon. It was the
alleged similarity of the pink colourways in each fabric
Mr Hobbs QC submitted that Mr Herbert did not have which first struck the employees and agents of
an open mind, and was very opinionated; that he had Designers Guild and that is why its expert’s report was
formed an opinion at an early stage which, whatever 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 13.6. In each case the centres of
Ibbotson’s artwork had yellow and orange stripes, the flower heads are represented by
white and red flowers, green stalks and leaves in two a strong blob, rather than by a
shades of green, and that Mrs Williams tried out some realistic representation.
40 colourways before choosing the four colourways
(three of which had Ixia parallels to a greater or lesser
extent) which were commercially developed. 14.7. In each fabric the leaves are
painted in two distinct shades of
The similarities are these: green, with similar brush strokes,
and are scattered over the design.
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 The overall impression is very similar, but there are
between the stripes, so as to give differences. The Ixia design is smaller and more
the same general effect. 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
9.2. Each is painted in a similar distinctly less impressionistic than those in Ixia . The
neo-Impressionistic style. Each impression of similarity is more marked on a
uses a brushstroke technique, i.e. comparison of the pink colourways.
the use of one brush to create a
stripe, showing the brush marks The Designers Guild witnesses expressed the view that
against the texture. the defendant’s design had the characteristics of the
Designers Guild “handwriting”, i.e. “the bold
uncomplicated free hand painting technique
10.3. In each fabric the stripes are characteristic of the [Designers Guild] perceived
formed by vertical brush strokes, image”: Mr Herbert’s witness statement, para 23. Mr
and have rough edges which merge Halsey also expressed the opinion that Marguerite had
into the background. 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
11.4. In each fabric the petals are passing-off case, and it is clear that, for Designers
formed with dryish brushstrokes Guild to succeed at the first stage of similarity, it must
and are executed in a similar way show much more than a similarity of style or
(somewhat in the form of a “handwriting”.
comma).
The similarities between Ixia and Marguerite were
thrown into relief by two fabrics made by other
12.5. In each fabric parts of the manufacturers which Mr Williams obtained for the
colour of the stripes shows through purpose of these proceedings. Both were striped
some of the petals. 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 Some opinion evidence of similarity was adduced, but
Mr Williams, with his knowledge of the trade, could its utility is very limited. The witness statement by Mr
find. Mr Halsey had said in his witness statement Halsey, the product development and quality director of
(served in June 1997) in a passage the admissibility of Designers Guild expresses his view of the similarities
which is challenged: “To this day I am aware of no and he was cross-examined on the differences. Mr
design on the market which is as similar to Ixia as is Herbert, its expert, expressed a view on the similarities
the Defendant’s Marguerite ” (para.4). That may not be (and also on whether there had been copying, to which
admissible evidence of similarity, but it amounts to a I shall revert). The ways in which their evidence was
challenge which was either not taken up by Mr or Mrs helpful on the issue of similarity were Mr Halsey’s
Williams or one which they endeavoured to overcome explanation of the “resist” technique or effect (which
by acquiring the two samples. The two designs were by enables the impression to be given that an undercolour
Harlequin (“Fez”) and by Anna French (“Buttercups is showing through ) and Mr Herbert’s evidence on the
and Daisies”). The Harlequin design has stripes brush-stroke technique in the two designs. But their
showing brush strokes: the Anna French design has evidence on the general similarities was essentially
different types of flowers and petals arranged across evidence of opinion and cannot be said to add much to
stripes. what can be seen by the eye, and which was put by Mr
Alastair Wilson QC for Designers Guild.
They were shown by Mr Geoffrey Hobbs QC to Miss
Burke, who said that the Harlequin used a brush stroke A point on which there was agreement was that both
technique in water colour, and that the Anna French Ixia and Marguerite had the “resist” effect of the colour
design used a very liquid water-based paint. Miss of the stripes showing through the petals. Mr Halsey
Burke contrasted those designs with her own, which was invited by Mr Hobbs to accept that there was no
she said used acrylic paint, which was much stiffer and “resist” effect in Marguerite , i.e. that the colour of the
allowed her to create very big brush strokes, which stripes did not show through the petals: but he pointed
created an effect of brush marks against the texture of out that there was such an effect; and Mrs Williams
the stripe, which was missing on the Anna French also accepted in cross-examination that the stripes
design (although it can be seen on the Harlequin showed through the petals:
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 “Q … On your design, as on ours,
flowers did not have the dry paint brush effect; that the there are areas on your petals — —
stripe did not appear through the petals; that the style of not as many as in ours, but
the flowers was wholly different; that the leaves had nevertheless there are areas on the
more colours; that, instead of one type of flower, it had petals — — where the stripes show
different flowers; the flowers did not have a blob in the through.
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 A Yes. There is a colour there, yes.
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 Q In fact it happens two ways on
in common with Ixia in the way the stripes were your design. Sometimes it is
depicted, there was a major difference that there was an because the white is not fully in
additional narrow stripe down the side of the main register with the bleached-out
stripe. portions and a bit of the red is

showing through. In fact it is leaflets) to its wholesale and retail customers in the
showing through pink. 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
A Yes. 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
Q Sometimes you have a hole in widely distributed to customers from August 1995
the petal which shows through onwards, including more than 250 books to the UK
more or less with the stripe colour? 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
A That is correct.” 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
15. She agreed that in the Anna French design the metre rolls of Ixia in August 1995.
stripe had not been allowed to shine through the petals.
Designers Guild also printed 30,000 copies of what it
In my judgment, Designers Guild has clearly shown describes as a brochure for the range. It is a four page
relevant similarity. The similarities are apparent. They handout, with a small picture of Ixia on the side of the
go far beyond the similarities which would be expected second page. 1500 of these were sent to UK customers
simply from both being based on an impressionistic in August 1995. I do not regard these as being of any
style or from both being based on a combination of significance for the purposes of deciding whether there
stripes and scattered flowers and leaves. But the was an opportunity to copy.
combination of, in particular, (1) the way in which the
petals and leaves are scattered; (2) the use of the brush- The first trade exhibition at which the Orientalis range
stroke technique showing the brush marks; (3) the was displayed was at the “Decorex” show at Syon Park,
similarity of the flowers (especially the depiction of the London, on 1st October 1995, which Mrs Williams
petals and centre of the flowers) and leaves; (4) the way attended.
in which the stripes can be seen through the petals,
involve a similarity which, despite the differences of The Russell Williams design was created in October
dimension, is very close. 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
Opportunity to copy
Williams). In my judgment there is the requisite degree
of access or opportunity to copy.
Mr Simon Jeffreys, the chief executive of Designers
Guild, gave evidence about the availability of the Ixia
The Marguerite design
design and fabric. As I have said, the design was part
of the Orientalis range, which was launched on 1st
The account by Miss Ibbotson and Mrs Williams of the
September 1995, when it went on sale to the general
evolution of the Marguerite design is as follows. In
public at its shop in King’s Road, Chelsea. In the three
about October 1995 Miss Ibbotson, was approached by
weeks or so prior to the launch Designers Guild
Mrs Williams to produce a Chinese style design. Mrs
distributed pattern or sample books, and brochures (or
Williams had exhibited at the TIP exhibition in
Brussels in October 1995, and as a result of contact centre of the flowers on the acetate does not have the
with Australian exhibitors, Mrs Williams had obtained spike effect found on Open Cherry Blossom and can be
a copy of Australian “Vogue Interiors” containing described as an impressionistic “blob”. Mrs Williams
Chinese-style designs. Mrs Williams was particularly and Miss Ibbotson used the working title “ Tumbling
looking for a design which would be suitable for Floral ” for the design on the acetate because of the
printing on both muslin and cloth. This was important placement/movement of the flowers. Mrs Williams
to Mrs Williams as it was not always possible to tell liked the “Tumbling Floral” design, but it was not what
which designs were going to be successful on which she had in mind for the Chinese design (although it
type of fabric, and so designs are developed for both reminded her of a successful previous design produced
cotton and muslin to give greater flexibility of range. by Russell Williams in January 1995 called “Daisy”).
Accordingly, Mrs Williams decided to develop, from
Mrs Williams and Miss Ibbotson met in Manchester in the Open Cherry Blossom / Tumbling Floral design,
October 1995 when Mrs Williams described what she two separate designs, one which incorporated the open
had in mind, and suggested “something with blossom motif on the acetate which could be developed
blossoms”, or a very loose floral. They looked through along the “Daisy” line and another which had a more
a few books and pictures with a Chinese “feel”. Chinese feeling to it by re-designing the shape of the
Following this meeting, Miss Ibbotson created a blossom on Open Cherry Blossom but retaining the
mulberry original in October 1995. This artwork is mulberry background.
referred to in this action as “ Open Cherry Blossom ”,
and may be shortly described as consisting of a broad As a result, Miss Ibbotson produced two further pieces
stripe in two shades of mulberry with blossoms of artwork which she presented to Mrs Williams in
superimposed. The centre of the flower is represented mid- November 1995 at the premises of Sunderland &
with spikes radiating from the it (referred to by Mr Wild Screen Printers Ltd in Rochdale. One of the
Alastair Wilson QC for Designers Guild as a kiwi fruit designs was a variant on Open Cherry Blossom , in
or cat’s whiskers effect, or by Miss Ibbotson as a star which the scale and density of the floral trail was
effect). altered ( the centre of the flower was made smaller but
still contained the spike effect).
“The blossom was also painted separately on acetate to
enable the motif to be used separately on a muslin The second piece of artwork was a two colour
cloth” ( Miss Ibbotson’s statement, para 3). Miss (orange/yellow) striped background from which had
Ibbotson “had placed a sheet of acetate over the been bleached the floral design from the acetate. This
artwork and re-painted the white open blossom motif was done by placing the acetate on a box through
directly onto the acetate so that it could be used for which light shows through, and the striped artwork on
printing on muslin” (Mrs Williams’ statement, para 8). top of the acetate, and by painting the artwork with
In the witness box Miss Ibbotson said the acetate was bleach in the places on the stripes corresponding to the
painted as an overlay to sit on Open Cherry Blossom artwork on the acetate below.
design which could be used separately to show how a
muslin would work, or to show how Open Cherry Mrs Williams discussed colour separations of the
Blossom would look with white flowers. It was painted designs with Lee Reynolds, a director of Sunderland &
with gouache, a water based paint, mixed with a little Wild, and then agreed with her husband that both
washing up liquid to make the paint adhere to the designs should be put into production. The variant on
acetate. The white paint was straight from the tube, but Open Cherry Blossom was produced by Sunderland &
the greens and the red were mixed by her for the shades Wild in time for the Heimtextil exhibition in Frankfurt
she wanted. in January 1996, at which the defendant was exhibiting.
It was commercialised as Chinese Cherry Blossom .
The acetate contains white flowers (with a red centre),
green stems, and leaves in two shades of green. The Sunderland & Wild did not have the capacity to
produce colour separations for the combination of the similarities between floral striped designs were
bleached striped artwork and acetate in time for the illustrated by the Harlequin and Anna French designs
Heimtextil exhibition, and initial separations were which her husband had bought for the purpose of the
made in February 1996. When she went to Sunderland proceedings, and which I have described in section VII
& Wild to look at them, Mrs Williams suggested to Mr above, in my judgment they do show features with Ixia
Reynolds that the positioning of the green stems be which are inherent in the nature of striped designs or
changed, that the stripes be made less harsh, and that striped floral designs and that it is extremely
the paste white area be tidied. In mid-February 1996 improbable that the similarities between Ixia and
Mrs Williams approved the final separations, and later Marguerite could be the result of coincidence. There
that month and in March 1996 Sunderland & Wild, are simply too many, and too many obvious,
after discussion with Mrs Williams, produced about 40 similarities, any one of which could of itself be
small fabric samples (minis) in various colours and coincidental, but the combination of which could not.
combinations (including the original orange/yellow
combination), from which Mrs Williams chose four Miss Ibbotson and Mrs Williams each gave evidence,
colourways (pink, blue, yellow and green), which were as I have said, that the origin of Marguerite was the
commercialised as “ Marguerite ”. acetate floral design which, in October 1995, had been
painted over Open Cherry Blossom . If the account of
Mrs Williams says she was not aware of the Ixia the origin and purpose of the floral design on the
design when she commissioned the design from Miss acetate were true (namely to enable the floral motif on
Ibbotson, nor when she developed the colourways for Open Cherry Blossom to be used for printing on
Marguerite . She attended the Decorex exhibition in muslin, or to show how it would look with white
September 1995, where Designers Guild displayed flowers), it would be evidence that Miss Ibbotson and
Ixia , but does not recall seeing the fabric there. She Mrs Williams were not engaged on an exercise of
also attended the Heimtextil exhibition in January 1996 “tracking” Ixia , because it would demonstrate that the
but does not recall seeing even the Designers Guild inspiration for the floral part of the design was Open
stand there. Miss Ibbotson says that her designs were Cherry Blossom , and would distance the creation of
original and she did not have or make reference to any the floral design from the striped pattern, both in time
Designers Guild fabrics when creating the artwork for (about a month) and in creative concept.
Open Cherry Blossom , Chinese Cherry Blossom or
Marguerite . She exhibited at the Heimtextil exhibition The starting point is that the acetate design does not
in January 1996, but does not recall seeing the Ixia precisely “fit” over, or register with, Open Cherry
fabric on the plaintiff’s stand. Blossom . Mr. Herbert’s evidence, which is easily
confirmed by the naked eye, was (after it had been put
The essence therefore of the defence is that (a) neither to him by Mr Hobbs QC for Russell Williams that
Mrs Williams nor Miss Ibbotson knew of the Ixia Miss Ibbotson was endeavouring to copy what was
design when the Marguerite design was produced and underneath) that the acetate did not match Open Cherry
executed; (b) any similarities between Ixia and Blossom accurately, that in one case a flower on the
Marguerite are coincidental; and (c) the Marguerite acetate was at least a centimetre away from the
design evolved from the floral part of the Open Cherry corresponding flower on Open Cherry Blossom , and in
Blossom design being copied onto the acetate for use another case parts of the flower were 10mm to 12mm
on muslin, or to show how Open Cherry Blossom apart. It was put to him that these were minor
would work with white flowers. discrepancies, but his evidence was that a discrepancy
on the acetate was a centimetre, and an acetate is
When Mrs Williams was asked, “ … what you are normally a very accurate rendition of what is
saying is that all those similarities that occur in this underneath, unless it was being used for some other
case are coincidental … ?”, she replied “Yes, I suppose purpose.
so.” Although she did not accept that coincidental
Miss Ibbotson accepted that the acetate did not fit the beholder, as they say”.
exactly, but that was intentional because “Mrs
Williams particularly wanted the white petals to fall on I conclude that this explanation, that the purpose of the
to the white cloth, rather than falling on to a colour”. It acetate was to enable the motif on Open Cherry
was put to Mrs Williams that “the register [between the Blossom to be used separately on a muslin cloth and to
acetate and Open Cherry Blossom ] is atrocious”. She show how Open Cherry Blossom would look with
did not disagree but supported Miss Ibbotson by saying white flowers, is wholly inconsistent with a design of
that Miss Ibbotson was painting in a loose or very free the flowers and leaves which is different from Open
style, and she accepted that the registration between the Cherry Blossom , and I must reject the evidence of
acetate and the striped artwork was significantly better. Miss Ibbotson and Mrs Williams. I accept Mr Geoffrey
Hobbs QC’s submission that demeanour is only one
The lack of registration does not necessarily mean that element in evaluation of credibility: but Miss Ibbotson
the acetate was not painted by laying it over Open was a very unsatisfactory witness, and both she and
Cherry Blossom . The positioning and arrangement of Mrs Williams, far from being helpful and frank, were
the flowers is very similar, and the shapes of the stalks content to deny the obvious. When pressed on the
and leaves are very close. But the lack of registration is origin of the acetate Miss Ibbotson said “I am sticking
some evidence that, even if the acetate was painted by to my story”, and although she was to some extent
placing it over Open Cherry Blossom , the intention rescued in re-examination from the implications of that
was not to make a copy, but to form part of a separate statement, in my judgment she gave just that
design. This is confirmed by the fact that the styles of impression. But my conclusion is not based on
the acetate and Open Cherry Blossom are different. In demeanour but on the evidence itself.
particular, the flowers on the acetate are different from
those on Open Cherry Blossom . The flowers on the In my judgment the explanation was designed to
acetate have the characteristics (which appear on Ixia provide a false provenance for the floral part of the
but not on Open Cherry Blossom ) that the petals are Marguerite design, and to distance it from the creation
painted in the form of a comma or snail (as Mr Herbert of the striped artwork. The acetate and the striped
accurately described them) and the centre of the flower artwork were created to be used together. It is very
is a “blob”, whereas the petals on Open Cherry probable indeed that the acetate and the striped artwork
Blossom are rounded and the centre of the flower has ware created at around the same time. The combination
the kiwi fruit or cat’s whiskers or star effect. Miss of acetate and striped artwork provided a combination
Ibbotson accepted that the centres of the flowers were which could be used for the dual purpose (as it was) of
different, but suggested that “the two worked together”. producing fabric with the floral design and the stripes,
When it was put to her that if the acetate artwork were and muslin with just the floral design, whereas the
placed on Open Cherry Blossom , the former would combination of the acetate and Open Cherry Blossom
have obliterated the “cat’s whiskers” she replied “bits could not provide it.
of [the cat’s whiskers] would have sparkled around the
side of it”. It is common ground that the final Marguerite design is
a combination (with Mrs Williams’ modifications) of
Next, but of less significance, there is no relationship the acetate and the striped artwork, and once the
between the colours on the acetate and those on Open account of the origin of the acetate from Open Cherry
Cherry Blossom , as Mrs Williams accepted. The Blossom is rejected, it is simply common sense which
greens on the acetate are the same greens as on Ixia and leads to the conclusion that the acetate and the striped
there is no green on Open Cherry Blossom . When it artwork were created together. In my judgment the
was put to Miss Ibbotson by Mr Alastair Wilson QC for effect of the (1) many and obvious similarities; (2) the
Designers Guild that the colours of the acetate did not opportunity to copy; (3) the complementary nature of
sensibly relate to the colours of Open Cherry Blossom , the acetate and the striped artwork; and (4) the false
her unsatisfactory answer was “Beauty is in the eye of provenance given to the acetate, is that Designers
Guild has convincingly discharged the burden of corresponding place on the striped artwork. Neither of
proving that Russell Williams copied Ixia. these marks shows any sign of smudging. There is also
what appears to be a trace of white paint along the left
I therefore reject Mrs Williams’ evidence that she was hand side of the striped artwork corresponding to a
unaware of the Ixia design. I do not have to decide how place where there had been (but no longer is, because
she obtained it: she might have first seen it in of usage of the acetate) a white flower on the acetate.
September 1995 at the Decorex exhibition and There is also green paint on the back of the striped
subsequently obtained samples from the department artwork, and what appears to be green paint on the side
stores: she attended the exhibition, but in her witness of the artwork.
statement she said she did not recall seeing Ixia . As Mr
Halsey said, it is most exhibitors’ normal practice to These marks were raised for the first time at the trial, in
look around other stands. Mrs Williams had, with four the cross-examination of Miss Ibbotson. Mr Alastair
designers, created 200 designs, in the relatively short Wilson QC told me that the marks had been noticed at
period of 5 years, including 95 with Miss Ibbotson a consultation shortly before the trial, and that a
from 1994. Common sense compels the conclusion that deliberate decision had been made to take Russell
she would keep an eye on new designs by market Williams’ witnesses by surprise.
leaders and competitors. Miss Ibbotson denied any
knowledge of Ixia when she designed Marguerite : but Miss Ibbotson gave evidence that she had mixed the
Mrs Williams played an obviously major role in the red paint for the shade she wanted, and (both in cross-
design process by giving instructions to Miss Ibbotson, examination and re-examination) that the red on the
and making design modifications, and it is not acetate and the striped artwork were the same. It was
necessary for me to express a concluded view on Miss put to her that the red mark on the striped acetate
Ibbotson’s knowledge. 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
Paint marks and smudges had moved across on to the stripe; and that the acetate
was painted after the striped artwork. She replied “ … I
It is therefore not strictly necessary to go into the cannot explain why the red is on the front”. It was later
matter of the red and white paint marks on the front of put to her that white marks down the side of the striped
the striped artwork, and green marks on the side and artwork were paint from the acetate flowers in the
back. The green marks are of doubtful significance, and corresponding position: she did not accept that it was a
I shall deal in this section only with the red and white paint brush mark.
marks. It was submitted by Designers Guild that the
only explanation for these marks is that they came from Mr Reynolds gave evidence about the separation
fresh paint from the acetate, and consequently that the process. In his witness statement he explained that the
striped artwork and the acetate are contemporaneous; basic separation process involves laying a sheet of
and that therefore Mrs Williams and Miss Ibbotson drafting film over the artwork (a separate sheet being
could not have been telling the truth about the origin of used in relation to each colour which will be printed).
the acetate and the striped artwork. The sections of the design which will appear in the
relevant colour are then painted onto the film using the
There is no trace of any extraneous white, red or green technique which best suits the feel of the original
paint on Open Cherry Blossom , and if the acetate was artwork. The Marguerite design required the majority
painted by placing it over Open Cherry Blossom then of the design to be painted in a watery “wash” style.
Miss Ibbotson must have taken some care not to have Following the painting of the drafting film a sheet of
allowed the paint from the acetate to get on to Open magenta rasta film is then placed over the drafting film
Cherry Blossom . But there is a mark of red paint at the and a piece of photographic film is then placed over the
top right hand corner of the acetate and a mark at the magenta rasta. This “sandwich” is then exposed to light
to produce a negative. This procedure is carried out for Q Can you look, either without the
each individual colour separation. This procedure aid of the magnifying glass of with
converts the tones of acropaque to tones made up of the aid of the magnifying glass, and
minute dots via the rasta film. The negative is then tell my Lord what you observe
flashed back onto photographic film to achieve a there [at the top of the striped
positive. This positive is then exposed onto a screen artwork]
(with one separation per colour per screen) from which
the final fabric is printed.
A There is some kind of white
In examination in chief he said that unless the making mark.
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 Q You say white mark. You will
gloves). He was asked to look at the marks on the have heard my learned friend, just
striped artwork: now. Mr Learned friend puts the
proposition that that is paint. Can
you shed any light on that one way
or the other?
“Q First of all, are there any
observations you make about that
red blob based on your own A I am afraid I cannot.
knowledge and experience?
Q Try really hard, please.

A No, I cannot.
A (After a pause) It looks like some

Q Do you see any brush strokes in sort of smudge, but I could not say
the portion of the red blob which is for certain.
said to have been carried over?
Q Now, I have drawn your

A It is purely a mark. I could not attention to a red blob; I have
say whether it is a brush stroke or drawn your attention to a green
not … mark; and I have drawn your
attention to the mark you were just
looking at now. Will you please
Q Are you surprised to see it there consider this question and give my
in that way? Lord your answer. If the striped
artwork (and I am referring to the
cartridge paper) had arrived at
A No Sunderland & Wild without those
marks on it — do you understand
the frame of reference to my
… question?

A Yes.
Q How tenacious, if that is the right
word, is the paint that you see on
Q Would it surprise you to find that the acetate?
it had left your premises with such
marks on it?
A It is very unstable on acetate.
A No.
Q What do you mean by unstable?
Q Can you tell my Lord why it

would not surprise you to find that A The slightest amount of moisture
it had left your premises with such tends to lift the paint acetate or
marks on it? flaking of the design will —
A Purely because of the handling of Q When you say slightest amount

the artwork during the processes of moisture, how slight is slight?
that it goes through from beginning
to end.
A A damp hand could remove the
paint.
Q I would like you to elaborate this
because I think believe it is a point
that may be considerably important Q Are your hands damp at the
point? moment?
A From the process of separation A Slightly, yes.

through to printed mini and
subsequent colour ways.
Q Is that the degree of dampness
you are talking about?
Q Can you help us to understand
precisely how those marks you
have just looked at could occur on A Yes”.
your premises, precisely how,
please?
A It could happen purely by

handling of the artwork in
processes. It is a design and it In cross-examination he was asked:
needs to be handled to be
separated.
“Q You say that it is not surprising
for bits of the ink of artwork to get it without knowing you have
smudged elsewhere on the artwork? smudged it, just by handling it and
turning of the artwork.
A Yes.
Q Than may be, but the red dot
does not look as if it has ever been
Q You have encountered that sort smudged, does it?
of thing before, no doubt?
A It could have been smudged.

A Yes.
Q It is unlikely, is it not, because it

Q In this particular case, the has been covered with Sellotape,
particular smudges to which we and the changes are it had been
draw attention on the front of the covered with Sellotape throughout
artwork — the procedure?
A Yes. A It could have been. It could have

also not been covered with the
Sellotape.
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 To a lay view, the presence of red marks at the top of
acetate. Do you see that? 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
A Yes. 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
Q Generally speaking, if somebody transferred would be consistent with smudge marks, but
foolishly picks up a bit of paint on is very hard to reconcile with the actual state of the
his finger and gets the paint on it, paint marks.
he could put it down anywhere on
the artwork when he handles — 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
A Yes, but you could also smudge 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 The potential relevance of this episode is that if the
? If there is white paint from the acetate on the side of court is satisfied that Russell Williams copied the
the striped artwork, how could the striped artwork have Osborne & Little Secret Garden design at around the
been bleached subsequently (as it was on Miss same time as it is alleged to have copied the Designers
Ibbotson’s account) without removing the white paint? Guild Ixia, and if there are parallels in its modus
If the acetate was painted after the striped artwork had operandi , the episode might be relevant in assessing
there been an intermediate painted acetate which was the credibility of the denial that it had copied Ixia.
projected to bleach the striped artwork? The answers to Further, if the evidence of the witnesses on the Osborne
these questions would be entirely speculative. & Little episode were unsatisfactory or incredible that
too may throw light on the credibility of their denial of
If the provenance of the marks on the striped artwork copying Ixia .
had been central to this case, there would no doubt
have been expert evidence on whether the paint on the There is no serious question about Osborne & Little’s
acetate and the striped artwork was identical, and more copyright in Secret Garden . When Russell Williams
elaborate evidence on whether it was possible for the gave undertakings to Osborne & Little on 28th
paint on the acetate to have been transferred to the November 1996, one of them was not to produce any
striped artwork in the course of the colour separation fabric in the future which might infringe Osborne &
process and with what effect. The late stage at which, Little’s copyright in the drawings reproduced in the
and the manner in which, the marks and smudges were Secret Garden range.
treated meant that they had to be dealt with in a
somewhat superficial way. Since I have already come Nor is there any serious question about similarity. Each
to a clear conclusion that, irrespective of the marks and fabric has a design of topiary trees. In each case the
smudges, the acetate and striped artwork were created trees are cut as trees, and not (as one sometimes finds)
together, I will say no more than that on the present into novelty shapes such as animals. In each case there
state of the evidence I would have regarded the red are some seven shapes of trees, with a broad
mark as a relatively minor piece of evidence tending to correspondence. Each fabric has a geometric design. In
support that conclusion. 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 ,
Osborne & Little the geometric pattern is repeated across the fabric, and
although it has the effect of a maze, each section is
Shortly before this action came to trial, Designers closed off: within alternating sections there is the top of
Guild received documents from the wallpaper and a tree to give the effect of it being looked at from
fabric designers, Osborne & Little plc, who had in above, but in the other of the pair of sections there is a
October 1996 through their solicitors complained to simple topiary tree depicted from the front, which has
Russell Williams about alleged copying of one of their no direct counterpart in Secret Garden . In each fabric
designs ( Secret Garden ) by Russell Williams in their the painting style is similar, and the size and spacing of
Bowood design. In November 1996 Russell Williams the trees is very similar; in each design there is shading
made a modest payment to Osborne & Little, and gave on the left of the trees to give the effect of the sun
an undertaking not to use the design again. In a written shining from the right. In each fabric the trunk of the
judgment handed down on 18th November 1997 I tree shows, together with roots protruding from the
decided that evidence of the Osborne & Little episode trunks. Although (as Miss Ibbotson and Mrs Williams
would be admissible as similar fact evidence (on the were quick to point out) all trees have trunks and roots,
assumption that the facts might turn out to be similar) topiary trees do not necessarily have visible trunks, still
and that Russell Williams’ witnesses could be cross- less visible roots, and a visual representation of a
examined on it. topiary tree does not have to show either trunks or
roots. Similarly although mazes may be found with production in April 1996.
topiary trees nearby, there is no necessary connection
between topiary trees and mazes and they are not But the trees in the Bowood design are much closer to
inevitably, or perhaps not even naturally, associated Secret Garden than to those in the Rose book. In both
with each other. Bowood and Secret Garden the trees are depicted with
a darker shaded side on the left, to give the impression
On accessibility or opportunity to copy, it was said in of the sun shining from the right (a feature which does
the letter from Linklaters & Paines that the Osborne & not occur in Rose, nor does it appear in the Waverly
Little design had been on the market since 1993. Miss design). In each case the trees have clearly depicted
Ibbotson and Mrs Williams both said in evidence that trunks: this feature is not shown in the Rose book
they were aware of the Secret Garden design, although although it does occur in the Waverly design in rather
Mrs Williams said she had seen it only from different proportions. In each case the trees have roots
photographs and was not aware of the maze effect on depicted as they can sometime be seen in real trees
the border. above the ground: this feature does not occur in the
Rose book, although it can just be seen in the Waverly
The account by Miss Ibbotson and Mrs Williams of the design. Mrs Williams was referred to five trees in
origin of the Bowood design is as follows: according to Secret Garden and confirmed that they were similar to
Miss Ibbotson, when she attended the Heimtextil those in Bowood .
exhibition in Frankfurt in January 1996 Mrs Williams
showed her a magazine supplement with a topiary Their account of the origin of the geometric shapes is
design by Waverly, showing topiary trees in various that when Miss Ibbotson went to see Mrs Williams in
shapes, which Mrs Williams said she liked; the two of Cardiff in February 1996, they (together with their
them had a general discussion about whether the design husbands) had lunch at an hotel, where Mrs Williams
idea was popular. About a month later, when Miss had seen on the ceiling a moulded pattern design which
Ibbotson was in the Russell Williams shop in Cardiff, she liked and though could be used on the design to
she was given a brief to produce a topiary design. In give the effect of a maze. Miss Ibbotson’s husband took
the course of producing the design she looked at a photograph of the ceiling pattern, and this pattern
various magazines with articles on gardens and country formed the basis of the geometric design with a maze
houses with topiary. She added: “I was also aware of a effect.
design by Osborne & Little that had the topiary trees
on it”. But at the time of designing Bowood she did not When asked if Osborne & Little came up in the initial
have a cutting of Secret Garden or find it in a conversation with Mrs Williams in Frankfurt, Miss
magazine. She used Rose, Traditional Garden Book , Ibbotson answered “Not that I recall”. Although she
pp.100-101, as the reference source for the topiary trees was aware of the Secret Garden design, she said that
in Bowood , and produced a layout of trees, the shape she did not refer to any sample or photograph. Mrs
of three of which were softened on Mrs Williams’ Williams said “I was aware of the [Secret Garden ]
instructions. Mrs Williams gave evidence that she too design but, no, it was not an attempt to copy this
looked at this book and did not like the novelty trees . design”. When asked whether what she was saying was
Subsequently Miss Ibbotson painted, at the end of that the similarities were coincidental she replied; “Yes,
February or at the beginning of March 1996, the I suppose so”. But when she was pressed on the
Bowood design. Her evidence was that she discussed similarity between the Bowood maze and the Secret
the painting technique (in particular not to use a stencil Garden maze Mrs Williams said she had not seen the
effect) with Mrs Williams, but Mrs Williams at first Secret Garden maze, because she had only seen the
denied that she had discussed the painting technique Secret Garden fabric in photographs and did not recall
with Miss Ibbotson; and when it was put to her that the maze.
Miss Ibbotson had said that they had discussed it, Mrs
Williams said she did not recall it. Bowood went into When the Linklaters & Paines letter was received 8,000
metres of Bowood had been produced, of which only Secret Garden counterpart (the one with a square
about 750 metres was unsold, and there were orders for effect) was modified by Mrs Williams in a way it
reprints outstanding. When Mrs Williams received the makes it closer to Secret Garden . The size and spacing
letter she and her husband consulted their solicitor in of the trees in the two designs is similar. In each case
Manchester, who “felt that, especially as we had there is a left side in shadow, a feature not found in the
already received the letter from Designers Guild, that Rose book (or in the Waverly design). The depiction of
this was a really difficult situation”. They then reached the feet of the trees in the two designs is strikingly
what Mrs Williams described as a commercial similar: the similarity cannot be explained by Miss
settlement on the basis of paying Osborne & Little the Ibbotson’s “As trees do” answer or by Mrs Williams’
costs of instructing Linklaters & Paines. They did not “Trees have roots” answer. The Rose book trees have
pay any compensation for the 7,000 metres sold, and no such trunks or roots, and the feet of those trees
delivered up the remaining stock. The settlement was a which have a trunk or root motif in the Waverly design
commercial decision and Mrs Williams said she are quite different. As the Waverly design illustrates,
believed that there had been no copyright infringement. there is no necessary connection between topiary trees
In cross-examination Mrs Williams accepted that the and mazes and yet Mrs Williams, who claimed not to
settlement had cost an additional £5,000 or so, of lost recall the Secret Garden border, wanted a maze effect,
investment (design and colour separate costs, value of which she obtained in a form which is not only very
stock delivered up), but overall it is likely that the similar to Secret Garden , but also has an almost
Osborne & Little episode resulted in neither a identical ball-like feature of the top of a topiary tree
significant profit or loss for Russell Williams. being looked on from above. The style of painting in
the two designs is very similar in appearance, and Mrs
One of the peculiarities of Mrs Williams’ reaction to Williams tried to deny that she had participated in
the Linklaters & Paines letter is that she did not at once discussions about it. I also infer that Mrs Williams
raise it with Miss Ibbotson, who had designed knew that she had been guilty of copying from the fact
Bowood . Mrs Williams made the commercial decision that she did not at once get in touch with Miss Ibbotson
to settle before discussing the claim with Miss when the Linklaters & Paines letter was received; that
Ibbotson. It seems that Mrs Williams referred Miss it was about two weeks before Miss Ibbotson was in
Ibbotson to the solicitor about two weeks after the letter touch with the solicitor; that the solicitor had negotiated
before action. a settlement agreement within four weeks of the letter
from Linklaters & Paines (although it was not signed
In my judgment Miss Ibbotson and Mrs Williams were for a further two or three weeks after that).
deliberately creating a design modelled on the Osborne
& Little design. Each said that she was aware of Secret This episode is relevant to this action, not because
Garden , although Mrs Williams, when pressed on the copying in one case is in itself evidence of copying in
similarity of the maze effect, said she had seen the another case, but because (as Mr Wilson QC submitted)
design only in photographs and did not recall the maze. this episode shows: (1) Mrs Williams plays a major
Each denied copying, and Mrs Williams claimed that design role; (2) together Mrs Williams and Miss
the similarities were simply a coincidence. Their Ibbotson are capable of devising designs which are
evidence was wholly unconvincing, and the use of the substantially similar to those of market leaders; (3) they
Rose book and the motif in the Cardiff hotel was claim independent derivation in situations where their
simply the use of external sources as a cover for design has very little similarity to the claimed source
copying the Osborne & Little design. The trees look and very great similarity to the copyright material,
much more like Secret Garden than those in the Rose which they dismiss as mere coincidence. If it were
book (or the Waverly design): the trees selected from necessary to rely on this material (which it is not) I
the book are the ones most like the Secret Garden trees, would have no hesitation in deciding that the conduct
including a spiral in the original draft — the one in of the Osborne & Little episode itself, and the evidence
Miss Ibbotson’s draft which does not have a clear about it given at trial, would provide very strong
support for a conclusion that Mrs Williams and Miss colourway was introduced by way of supervening
Ibbotson were engaged on a similar exercise in relation infringement, the court was free to decide that the three
to Ixia . other colourways were not the subject of infringing
adoption.
Substantial copying In my judgment there has been copying of a substantial

part. As was made clear in Ladbroke (Football) Ltd v
The final question is whether, if there has been William Hill (Football) Ltd [1964] 1 WLR 273 at 277,
copying, there has been copying of a substantial part. it is not right to dissect the work of the plaintiff and ask
Mr Geoffrey Hobbs QC, for Russell Williams, in a if each part separately could be protected if it stood by
vigorous and eloquent closing, argued that because itself. The whole work has to be looked at to determine
there was no allegation of infringement in the whether the alleged infringing material has adopted the
Marguerite muslin design, there was no allegation of essential features and substance of the original. The
infringement in copying the flowers. It followed, he right approach is to look at the end result of the acetate,
argued, that the claim must be made in relation to the the striped artwork, the modifications made by Mrs
combination in Ixia of stripes and flowers to form a Williams (especially making the stripes less harsh) and
coherent whole; to treat the flowers on the muslin as her selection of colourways, and the printed fabric.
non-infringing was to release the claim for That end result is an infringement of the painting on
infringement on substantial part in relation to the floral which Ixia was based. It is the combination of the
trail. Secondly, he argued that Miss Burke had been flowers and the stripes, the way in which they related to
very strongly influenced by the Matisse tablecloth and each other, the way in which they were painted, and the
flowers, and that when assessing the question of way in which there was a “resist” effect which makes
substantial part, the court must ask itself whether that the overall combination the copying of a substantial
which has been taken was original to the artist whose part. The fact that the pink colourways bear the closest
work was thought to be protected. He accepted that resemblance to each other does not mean that only the
there was copyright in the protected work, but the pink Marguerite infringes copyright. It is the design
question of whether a substantial part had been taken which was copied and has been reproduced.
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 Conclusion
general conceptions of “handwriting”. Since there was
no claim that the floral arrangement on Marguerite was I therefore find that Russell Williams has infringed the
an infringement, and since the colour scheme of the copyright in the painting from which Ixia was
striped artwork was entirely different from Ixia , it developed: (1) by copying it in a fabric in several
could not be intended to be a reproduction of the colourways with a design ( Marguerite ) which is a
protected copyright work. The striped feature of the reproduction of a substantial part of the painting: (2) by
protected copyright work came more or less from the issuing the copies to the public; and (3) by possessing
tablecloth painted by Matisse, and neither infringing copies in the course of business, selling,
geometrically nor in terms of colour could it possible offering or exposing them for sale, and in the course of
be said that the striped artwork had been taken from a business exhibiting them or distributing them (see
Ixia . The Designers Guild case was nothing more than 1988 Act, sections 16 to 18 and 23 ). If the terms of the
that Russell Williams could not take a floral consequential relief or form of the order cannot be
arrangement which was innocuous and put it on stripes agreed, I will hear argument.
which were innocuous. Further, it had not been put to
the witnesses that the adoption of the Ixia colourways,
Crown copyright
between October 1995 and March 1996, had been an
1998 WL 1076661
infringement. If it was to be said that the pink

End of Document © 2024 Thomson Reuters.

Designers Guild LTD V Russell Williams (Textiles) LTD (Ta Washington DC)

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Designers Guild LTD V Russell Williams (Textiles) LTD (Ta Washington DC)

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AGYEI, DOREEN 1/23/2024

For Educational Use Only

trades as Washington DC (“Russell Williams”), was

Representation Designers Guild took the view that the Russell

© 2024 Thomson Reuters. 1

Simon Jeffreys: van Aerssen samples of the

Helen Burke: Mr Herbert, the expert witness for

Miss Ibbotson has been a designer

Wilhelmine van Aerssen: Aileen Williams:

Gijs Bertus Van Eijsden:

© 2024 Thomson Reuters. 4

background of the cloth tended to themselves

© 2024 Thomson Reuters. 5

work and the alleged infringement,

The principles to be derived from the cases cited to me

© 2024 Thomson Reuters. 6

Mr Halsey was not put forward as an expert witness:

© 2024 Thomson Reuters. 8

colourways. Again, in my judgment that is a legitimate

8.1. Each fabric consists of vertical

© 2024 Thomson Reuters. 9

around looking for designs which looked like Ixia ,

© 2024 Thomson Reuters. 10

Q Try really hard, please.

A (After a pause) It looks like some

Q Now, I have drawn your

© 2024 Thomson Reuters. 16

Q Can you tell my Lord why it

A Purely because of the handling of Q When you say slightest amount

A From the process of separation A Slightly, yes.

A It could happen purely by

A It could have been smudged.

Q It is unlikely, is it not, because it

A Yes. A It could have been. It could have

Q Those are both right next to the

© 2024 Thomson Reuters. 18

shapes of the stalks and leaves from Open Cherry

Substantial copying In my judgment there has been copying of a substantial

© 2024 Thomson Reuters. 22

End of Document © 2024 Thomson Reuters.

© 2024 Thomson Reuters. 23

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