England and Wales High Court (Patents Court) Decisions

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.

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.

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.

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.

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".

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:-

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.

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.

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.

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.

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:

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.

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.

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).

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.

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.

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.

62) In cross-examination he was asked:

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.

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.

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.

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.