BAILII is celebrating 24 years of free online access to the law! Would you consider making a contribution?
No donation is too small. If every visitor before 31 December gives just £1, it will have a significant impact on BAILII's ability to continue providing free access to the law.
Thank you very much for your support!
 |
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback] | |
Scottish Court of Session Decisions |
||
|
You are here: BAILII >> Databases >> Scottish Court of Session Decisions >> Walker, Downie, & Co. v. The Falkirk Iron Co. [1887] ScotLR 24_750 (20 July 1887) URL: http://www.bailii.org/scot/cases/ScotCS/1887/24SLR0750.html Cite as: [1887] ScotLR 24_750, [1887] SLR 24_750 |
||
[New search] [Printable PDF version] [Help]
Page: 750↓
[
The Patents, Designs, and Trade-Marks Act 1883, Part III., section 47, sub-section 1, provides that a certificate of registration may be obtained by the proprietor of any “new or original design not previously published in the United Kingdom.” Section 50 provides that, on registration, the proprietor shall have copyright in the design for five years. Section 60 provides that “‘design’ means any design applicable to any article of manufacture, or to any substance artificial or natural, or partly artificial or partly natural, whether the design is applicable for the pattern, or for the shape or configuration, or for the ornament thereof, or for any two or more of such purposes.”
In an action of interdict for infringement of the copyright of a design, registered in terms of the statute, for fire-doors for kitchen-ranges, the respondents maintained (1) that as the design served certain useful objects it was not a proper subject for registration under Part III. of the Act, and that an application for letters-patent should have been made under Part II.; (2) that the design could not be made the subject of registration because it related to, or depicted, not an article complete in itself, but one which was to be used in combination; (3) that the registration of the design was ineffectual, because it did not announce that it was registered for shape only, and that therefore third parties were entitled to assume that it was registered only for ornament; and (4) that the design was not novel. Held (1) that even if letters-patent could have been obtained, that did not prevent registration of the design; (2) that sections 57, 58, and 60 recognised the existence of a protected design to be applied to an article of manufacture; (3) that the Act intended that the purpose for which a design is registered may be proved by evidence when any question arises; and (4) that, upon the evidence, the design was novel. Interdict granted.
Walker, Hunter, & Company, Port Downie Ironworks, Falkirk, applied to the Comptroller of the Patent Office, London, for the registration of a design for fire-doors for kitchen-ranges of which they claimed to be the proprietors. The design was duly registered on 10th November 1884, and a certificate granted in terms of the Patents, Designs, and Trade-Marks Act 1883.
This was an application for interdict at the instance of Walker, Hunter, & Company against the Falkirk Iron Company, ironfounders, Falkirk, and the individual partners thereof, in which the complainers averred that the respondents had infringed, and were in the course of infringing, their copyright of the said design by making and selling fire-doors on kitchen-ranges of the same design and construction as those registered by them, without their consent.
The respondents admitted that they were making and selling fire doors for kitchen-ranges of a construction similar to those registered by the complainers, and averred that they had a right to do so, and that what the complainers claimed as a design was not a proper subject of registration and certificate within the meaning of the statute.
They stated—“(Stat. 1) The article in question is the door of a convertible kitchen-range, i.e., of a kitchen-range which may be used either as a close range or an open fire. When such a range is shut it is closed in on the top by means of a hot-plate, and in front by means of a door. The fall-bar, which
Page: 751↓
in the open fire projects outwards, can be turned no so as to be flush with the front of the range, and allow the door to shut. To complete the shutting in of the fire when the range is closed, it is necessary to close the open space between the hot-plate and the door, and it was the practice to do this by putting an iron plate or fire-cover upon the top of the fall-bar, which filled up the space between the hot-plate and the door. “(Stat. 2) Some time ago it occurred to the respondents that it would be better so to mould the upper portion of the door that when the fall-bar is up, and the door closed, the moulding upon the upper portion of the door should fit into the edge of the hot-plate, filling the space occupied in the other system by the moulding on the plate or fire-cover. The respondents accordingly constructed ranges on this principle.”
The respondents pleaded—“(3) The complainers' alleged design not being a design or a proper subject of registration and certificate within the meaning of the Patents, Designs, and Trade-Marks Act 1883, the note ought to be refused. (4) The complainers' alleged design not being new and original, the note should be refused. (7) The respondents not having infringed any rights of the complainers, the note should be refused. (8) The complainers having no copyright in said alleged design, the note should be refused, and the respondents found entitled to expenses.”
By interlocutor of 5th February 1887 the Lord Ordinary ( M'Laren), after a proof, the import of which appears from the opinions infra, repelled the pleas-in-law for the respondents, and granted interdict.
“ Opinion.—In this case the complainers are applying for interdict against the infringement of their registered design, No. 16,596, by the respondents. For reasons of convenience in the Acts of Parliament under which exclusive privileges are granted to the originators of ornamental designs no description of the design is permitted to enter the register, but the certificate of registration is accompanied by a perspective or diagrammatic drawing of the design, as the case may require, and the certificate is granted for the application of the design shown in the drawing to goods of a certain class. In the present case the certificate bears that ‘a copyright of five years’ is granted in respect of the application of the design to articles in class one. The drawing attached to the certificate is a perspective representation of an iron door with a moulding cast on the top edge. The moulding is shown cut off at each extremity in such a manner that it would fall in line with any continuation of the moulding which might be cast on the object to which the iron door is to be fitted. It appears from the evidence that the door shown in the drawing is the fire-door of a kitchen-range. I should infer from the drawing itself that the moulding was intended to be continuous with the moulding of the object to which the door was to be fitted, because if the moulding were intended to apply only to the door I should have expected that it would be shown ‘returned,’ or finished off in some way at the angles; and according to the evidence the drawing would be so interpreted by persons accustomed to deal in such things. The drawing does not bear to be a door of a kitchen-range, but it is recognisable as such by persons who sell or use such articles, just as a drawing of the fire-bars of a sitting-room grate would be recognised by everyone who uses an open fireplace of the construction familiar in this country. As I have already said, the statute does not authorise the insertion of descriptive matter in the certificate, and the drawing must be selfinterpreting.
“The novelty claimed by the designer consists in this—that his design is the first application of the idea of a continuous moulding along the front of a kitchen-range, inclusive of the fireplace door. The respondents deny the merit and originality of the design, and also maintain that it is not a subject of copyright of design. The objections may be conveniently treated together. It appears to me that the design has such merit and originality as entitle it to copyright protection, provided it can be shown to fall within the scope of the Designs Act.
“The standard of originality to which an inventor must attain in order to have legal protection is in no case a high one. I do not enter here upon the illustrations which the law of patents affords. But confining my view to the subject of design copyright I take it to be clear that it is not necessary that the design should have any artistic merit. In the present case no originality is claimed for the pattern of the moulding; the novelty consists in it being cut off at the extremities so as to be continuous with the moulding on the range. This is an example of what may be called constructive design, and without professing to have any special knowledge of such matters I may safely affirm that in the taste or fashion at the present time constructive design is very much in favour with the makers of furniture and articles of domestic use. Instead of overlaying their goods with ornament which has no particular relation to the structure, or part of the structure to which it is to be applied, our designers aim rather at neatness or elegance in the lines that enter into the form of the object, or are appropriate to it. In a kitchen—range a plain moulding carried out broadly may be better taste than more elaborate ornament. In any view, it is an application of an idea or mode of treatment (a very elementary one it may be) to an object and in a way which is new as regards the particular application. There is evidence that the complainers' design was immediately recognised as an improvement by the trade, and the fact that the respondents are selling the same thing (which I hold to be proved) is good evidence against them on the question of the worth of the design. In such circumstances I am not much impressed with the argument that this is not a design entitled to copyright protection. It is said that such a thing does not fall within any of the ordinary categories of invention; that ‘it was in the air,’ and that if the suspenders had not brought it out other makers would. The fact that several makers were thinking about something which one of them was the first to register is, to my mind, evidence that the thing registered is a design. It is apparently not a subject for which a patent could be obtained, and on the other hand it is not a mere unmeaning combination of known devices. Between these limits I think the designer may get protection for any variety of intelligent form or pattern capable of being applied to the kind of goods for which
Page: 752↓
he seeks a certificate. In the present case we have such an intelligent combination adapted to objects falling under class one. The merit of the invention, such as it is, consists in pleasing the purchaser's eye, and has nothing to do with the uses of the grate or the processes of cooking. I am therefore of opinion that this is not a subject for protection by patent, and that it is entitled to the copyright protection which the certificate purports to grant. “I have not referred particularly to the authorities cited, but I have considered them, and I conceive that the judgment to be pronounced is supported by the decisions.”
The respondents (the Falkirk Iron Company) reclaimed. The arguments appear sufficiently from the opinion of Lord Shand, infra.
Authorities cited by the reclaimers— Harrison v. Taylor, 4 H. & N. 815; Windover v. Smith, 32 Beav. 200; Holdsworth v. M'Crea, 6 L.R., Ch. App. 418, and 2 L.R. (H. of L), 380; Lazarus v. Charles, 1873, 16 L.R., Eq. 117; Adams v. Clementson, 1879, 12 L.R., Ch. Div. 714; Lemay v. Welsh, 1884, 28 L.R., Ch. Div. 24; Maloney, 10 L.T. (N.S.) 190; Brice on Ultra Vires, p. 103.
At advising—
The opinion of the Court (
The question raised is one of importance, and is not free from difficulty. By sec. 47 of the statute the design to be protected must be a “new or original design not previously published in the United Kingdom.” The alleged novelty of the pursuers' kitchen-range fire-door, which is not admitted, consists in its shape—in having a moulding on the top of the door corresponding to and fitting into the moulding in front of the hob of the range when the door is closed; and, assuming that such a design applicable to a kitchen-range is a good subject of copyright, it seems to me that sufficient novelty has been made out to sustain the right. It is true that doors having mouldings along the top corresponding with and fitting into the article of which they form part have been in use in wooden articles of furniture, such as sideboards, cupboards, and the like, but the evidence appears to show that until it occurred to the pursuers, with a view to secure special advantages, to have fire-range doors so made, this had not been done by any others in the trade. The moulding on fire-ranges was in use to be fixed to the top or fire-cover of the grate or to the fall bar, and the door which closed immediately below had no moulding, but was closed against the end of the grate immediately below the moulding on the cover or fall bar.
I do not think it necessary to go into the evidence on the point of novelty. It seems to be quite clear that the defenders' workmen first got the idea of adopting the shape which the pursuers introduced from having seen one of the pursuers' designs, and though there is some evidence by two witnesses of the name of Crosthwaite that they used a somewhat similar design, I think the shape of the door described by them, which opened downwards, was essentially different; while, as regards the stoves spoken to by some other witnesses, the moulding extended round the whole door, and did not correspond or fit into the rest of the article as the fire-door of the pursuers does into the fire-cover or hob of the grate, so as to make one continuous moulding. It may be quite true that it did not require a great degree of originality to suggest or mature the design which the pursuers claim as new, because doors of a similar shape or moulding had been used in articles of wooden manufacture. But unquestionably, on the evidence, the pursuers were the first to think of and apply the design in the making of a fire-door for a kitchen-range, and I think there is sufficient novelty to sustain the design as a subject of copyright.
Now, undoubtedly the adoption of this shape, which I call new on the grounds just explained, has been found to be attended with some important advantages. When the door had no such moulding (1) an open space or slit was left for the length of the fire-grate, through which cold air was admitted to the upper side of the fire, and (2) the fire-cover having the moulding on it was heavy and inconvenience was found in lifting it off, while if the moulding was put on the fall-bar and became part of it, as was frequently the case in the later manufacture, it intercepted the heat and prevented the benefit of the full radiation being got in front of the fire. The use of the new shape results in the removal of these disadvantages, and yet preserves a symmetrical if not ornamental form.
Assuming the novelty of the design to be made out, the points of the defender's argument, as stated, appear to be (1) that as the design serves the useful objects now explained, it should properly speaking be made the subject of a patent; and farther (2) that under the branch of the statute relating to designs you cannot have a registered design of an article not complete and independent in itself, but which is to be used in combination with an article to which it is to be attached. I shall deal with these points separately.
And in regard to the first of these it is to be observed that the statute does not profess to give any definition of a design which may be the subject of copyright. Section 60 declares that design “means any design,” without defining the meaning of the term, and then goes on, “applicable to any article of manufacture,” &c.,
Page: 753↓
I am further of opinion that the defenders' contention that a design cannot be made the subject of registration if it relate to or depict not an article complete in itself, but one which is to be used in combination with and as part of another article of manufacture, as, e.g., a design of a door as specially applicable to and in connection with a fire-range, is unsound. The language of sections 60 and 57 and 58 appear to me to make this clear, for in these sections the design is described as applicable to any article of manufacture, and the exhibiting of “a design, or of any article to which a design is applied” in certain circumstances is declared to be no bar to subsequent registration of the design, and the infringement of copyright is prohibited by exposing for sale any article of manufacture, or any substance to which a registered design, or any fraudulent imitation thereof, shall have been applied. All of these provisions recognise the existence of a protected design to be applied to an article of manufacture to which it may be attached, and of which it becomes a part.
It was further maintained for the defenders that the registration of the design in question was ineffectual, because it did not carry on its face in some way the announcement that it was registered for the shape only; that third parties were entitled to assume that the registration was for the ornament in connection with the hinge, and gave no protection to the shape. The pursuers themselves, in the door which they now make, have adopted a different ornament in connection with a change they have made in the form of the hinge. I am clearly of opinion that this objection is not well founded. When an infringement of copyright is complained of, all that the alleged infringer is entitled to see is the registered design, either as it may be found in the form of the article itself, as, e.g., an actual door of the fire-range in this case, or it may be the design and relative certificate which is in the hands of the owner of the copyright. The statute does not authorise him to demand inspection of the register itself from the comptroller until the copyright has ceased, as is clear from section 52d of the statute. No specification by the author of the design is required (or indeed allowed) as in the case of patents for inventions, and there is no register to which the alleged infringer can go, as in the case of infringement of a patent, in order to ascertain whether the act complained of can properly be characterised as an infringement, with reference to the purpose or object for which the design has been registered, whether for the pattern, the shape, or the ornament. In this state of matters it seems to me of necessity to follow—and it must have been intended—that the purpose for which the design was registered may be proved by evidence when any question arises on the subject; primarily the evidence of the owner who made the registration, but tested by the evidence of others acquainted with the trade and manufacture or business in the articles to which the design related. It will be found that many, probably the large majority, of designs are self-interpreting without such evidence, but there must be others in which a question may be raised, which, however, in most instances will be easily settled as soon as evidence is adduced. Thus, e.g., in the present case, evidence having been fully led, no one has seriously suggested on the proof, in which persons acquainted with the trade have been
Page: 754↓
I am of opinion that the pursuers' design was novel, that the design was registered for its shape or configuration, that it was a proper subject for registration and certificate under the statute, and as the design was clearly copied by the defenders the alleged infringement has been made out. On these grounds, though differing in some respects from the views of the Lord Ordinary, I am of opinion that his Lordship's judgment should be affirmed.
The Court adhered.
Counsel for the Complainers— D.-F. “Mackintosh— Ure. Agents— Auld & Macdonald, W.S.
Counsel for the Respondents— Balfour, Q.C.— Wilson. Agents— J. & J. Ross, W.S.
