An undertaking to the court, not to make and sell a product "of the same design" as that which had infringed someone else's copyright, was not breached by the design and production of a new product which, though strikingly similar to the infringing design, was not identical to it.
The Court of Appeal by a majority (Sir John Balcombe dissenting) allowed an appeal by the defendant, David Sharp, trading as the David Sharp Studios, against the decision of Sir John Vinelott as a High Court judge, on 5 December 1994, that he had breached an undertaking, recorded in a consent order made by Mr Justice Millett on 21 March 1994, in settlement of an action by the plaintiffs, Haddonstone Ltd, for infringement of copyright. The undertaking was not to "manufacture, advertise, sell, offer or expose for sale or distribute any article of reconstructed stone of the same design" as certain ones illustrated in the defendant's brochure.
The products concerned were made of reconstituted stone, a cement-based composition which can be moulded but looks, when set, like real stone. Architectural and garden ornaments can thus be made by a casting process at much lower cost than by carving solid stone. The plaintiffs claimed to be the exclusive licensee of copyrights subsisting in the designs of a range of such products.
The defendant admitted all the alleged breaches of the undertaking save one. This concerned a product called the Palace Urn, his original version of which had infringed the plaintiffs' State Vase design. After the consent order, the defendant started to manufacture what the judge called the new Palace Urn.
To the uninformed eye, the new urn seemed virtually identical to the old. But the judge accepted the defendant's evidence that, after the consent order, he had looked through old Sotheby's catalogues of 19th-century antique garden furniture and had found a metal urn, from a scaled-up drawing of which he had created a new mould. He produced photographs showing the whole process, which he said took 200 hours.
It was not disputed that the defendant was entitled to manufacture an urn within the general category of the Palace Urn, which was a recognisable and common garden ornament, featuring a campanula-shaped bowl with a curved decorated rim, a central frieze, handles on each side, a lozenged base to the bowl and fluted supports. No one or combination of these features could be said to be unique features of the plaintiffs' version.
The question, which the judge answered in the affirmative, was whether the defendant had gone further and produced a design which combined so many of the plaintiffs' features that it could be said to be in substance the same design.
Michael Hicks (Warren & Allen, Nottingham) for the defendant; Iain Purvis (Shoosmiths & Harrison, Northampton) for the plaintiffs.
Lord Justice Stuart-Smith said that the key words of the undertaking were "of the same design as". They were not, as they could have been, "of substantially the same design" or "of similar design." The parties had clearly chosen their words carefully.
The new Palace Urn was not the same as the old Palace Urn, and consequently was not of the same design. This accorded with what appeared to be the intention of the parties as expressed in the order. The undertaking was to stop the defendant producing and selling those particular articles advertised in his brochure, which were produced from existing moulds.
It was irrelevant that the defendant had adopted features which resembled but were not identical to the old Palace Urn, such as the egg-and-dart round the rim, rather than smaller medallions; a similar frieze motif and similar handles. The number of eggs and darts was not the same and the top was beaded and not plain.
The judge adopted the wrong test in asking himself whether the ordinary man in the street would differentiate between them. This was not a passing off action or infringement of a registered design. If the plaintiffs had wished to extend the scope of the undertaking they could have done so.Reuse content