Designer Guild Limited v. Russell Williams (Textiles) Limited (Trading As Washington Dc)

The House of Lords allowed the appeal and restored the trial judge's judgment that the respondent's fabric design had been copied from the claimant's original design and that what was copied amounted to a substantial part of the claimant's work. Section 16(3) of the Copyright Act 1988 was central: infringement requires copying of the work "as a whole or any substantial part" and substantiality is assessed by quality (the importance of the part to the work) rather than mere quantity.

The court held that, where a trial judge has found copying on the basis of extensive and specific similarities (supported by opportunity to copy and rejected explanations of independent creation), an appellate court must not substitute its own visual impression or dissect copied features piecemeal unless the trial judge erred in principle. The correct approach to "altered copying" is to ask whether the defendant incorporated a substantial part of the author's skill and labour in producing the original work.

The claimant (Designer Guild Limited) alleged copyright infringement by the defendant (Russell Williams (Textiles) Limited trading as Washington DC) in relation to two fabric designs: the claimant's earlier design "Ixia" and the defendant's later design "Marguerite". The trial judge found that the defendant had copied the claimant's design, identifying a series of specific similarities, rejecting the defendant's evidence of independent creation and finding that a substantial part of the claimant's work had been copied. Judgment at first instance is reported at [1998] FSR 803.

The defendants appealed to the Court of Appeal. They did not challenge the trial judge's factual finding of copying but relied on the argument that what had been copied did not constitute a "substantial part" of the claimant's work; the Court of Appeal allowed the appeal on that ground. The matter proceeded to the House of Lords.

The Lords framed the issues as (i) what, if anything, had been copied from Ixia, and (ii) whether what had been copied amounted to the whole or a substantial part of Ixia for the purposes of section 16(3) of the Copyright Act 1988. The House of Lords concluded that the trial judge had validly identified a number of copied features (including the combination of vertical stripes and scattered flowers, brushwork, the "resist" effect and other cumulative visual effects), that his rejection of the defendants' independent provenance was sustainable, and that those copied features cumulatively represented a substantial part of the claimant's originality and skill.

The Lords emphasised (a) that substantiality is a qualitative assessment of importance to the copyright work rather than a quantitative exercise, (b) that in altered-copying cases similarity frequently determines both copying and substantiality, and (c) the limited role of an appellate court in overturning a trial judge's impression-based evaluation unless there was an error of principle. The appeal was allowed and the judge's order restored.

Appeal allowed. The House of Lords held that the trial judge's finding of copying and of copying a substantial part should be restored because the judge had validly identified copied elements and assessed their cumulative quality; the Court of Appeal erred in dissecting features and substituting its own visual impression and in failing to apply the correct principles governing substantiality and appellate review.