Interlego Ag v. Tyco Industries Inc. and Others
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IN THE COURT OF APPEAL 1986, No. 43 BETWEEN
_________________ Coram: Sir Alan Huggins, V.-P., Fuad & Clough, JJ.A Dates of hearing: 5th-9th, 12th-16th& 19th-23rd January 1987 Date of Handing Down of Judgment: 26th March 1987 _________________ JUDGMENT _________________ Sir Alan Huggins, V.-P.: 1. The Respondents (“Interlego”) claim copyright in the drawings of various components of their toy construction sets and in the moulds for making the components. Such copyright, if it subsists, is conferred by the Copyright Act 1956, which applies to Hong Kong by virtue of the Copyright (Hong Kong) Orders 1972 and 1979. The Appellants (“Tyco”) advance a number of reasons why copyright does not subsist in all or some of these drawings and moulds and deny infringement. Fuad and Clough, JJ.A. have, in the judgments they are delivering, dealt exhaustively with the authorities on law and with the evidence given in the court below. I shall therefore indicate in much less detail how I have come to substantially the same conclusions. 2. The right to copy which is conferred by the Act is defined in s.1(1) of the 1956 Act but is still, substantially, “the sole right to produce or reproduce the work or any substantial part thereof in any material form whatsoever” (s.1(2) of the Copyright Act 1911). Such copyright is conferred on “artistic works”, which include “the following, irrespective of artistic quality, namely paintings, sculptures, drawings, engravings and photographs”: s.3(1). It is common ground that the design drawings in, respect of which copyright is claimed are “drawings” within this definition. It is further common ground that a design drawing can be reproduced if a three-dimensional article made from that drawing is substantially reproduced. In the present case it is not disputed that Tyco has taken one of Interlego's basic bricks (that have two fixing studs along its breath and four fixing studs along its length - the “2 x 4 brick”), has meticulously measured it and reproduced it as closely as possible. If copyright subsists in that brick as a whole, there is no doubt but that Tyco has infringed that copyright. “Design” (Introduction) 3. The first defence relied upon is that provided by para.8(2) of the Seventh Schedule, which reads so far as is material:
Many of the drawings in issue here were made before 1st January 1973, which was the date of commencement of s.10. Therefore it has to be decided whether those drawings were designs” within the meaning of the Registered Designs Act 1949 and, if so, whether they were capable of registration under that, Act. 4. Section 1(3) of the Registered Designs Act 1949 reads as follow:
No attempt has been made in the present case to distinguish between “shape” and “configuration” and it is common ground that no “pattern or ornament” has been applied to these components, mere colour not being a feature which is registrable. Tyco contends, nevertheless, that the features of shape which have been applied to them are such as appeal to and are judged solely by the eye. Jones, J. held otherwise. Estoppel 5. Tyco's first objection is that Interlego should not have been allowed to argue that there were no designs which were capable of registration, in view of the fact that Interlego had in fact registered the drawings as such. There is, Counsel submits, what amounts to a “public estoppel”, whether that estoppel is based upon election or any other equitable principle: having enjoyed the benefits conferred by registration, Interlego cannot be heard to say that the registrations were invalid: if an individual detriment has to be shown, it is that Interlego has, while enjoying the monopoly created by the Registered Designs Act, built up a dominance in the market, and Tyco (along with all other members of the public) is now entitled to make use of the designs. It is conceded that Tyco did not in fact search the register and alter its position as a result, but the monopoly was there and could have been enforced if Tyco had used the designs during its currency. Interlego contends on the other hand that such an estoppel is unknown to the law and that, in particular, a patentee (who likewise enjoys a monopoly) has been held to be allowed to say that his own patent is invalid: Cropper v Smith (1885) 2 R.P.C 17, 25. To that Mr. Jacob replies that there is a strong reason for allowing an invalid patent to be set aside, but, as it seems to me, the same reasoning applies equally to a monopoly created by registration under the Registered Designs Act. That which Interlego wants to say inconsistently with its previous stand is that its product has no “eye appeal”, although it persuaded the Registrar to register the designs despite his initial objection that the features were dictated solely by function. Even bearing in mind that, until the decision of the House of Lords in Amp Incorporated v Utilux Proprietory Ltd 1972 R.P.C. 103 (“Amp”), s.1(3) had been differently interpreted, I think there is much to be said for an argument that the evidence of a person who changes his stance on such an issue as the existence or non-existence of eye appeal is to be accorded little weight. However, I have not been persuaded that he is estopped from contending that a registration made at his instance is invalid. 6. Did these components have “eye appeal”? Eye appeal is a technical phrase which must be distinguished from the more general “visual appeal”: it is confined to shape and does not include colour or finish. Lord Reid analysed the definition in Amp, starting at p.108 1.8:
So far no special difficulty arises in the present case. Lord Reid continued:
Again no difficulty arises until one reaches the word “solely” and it is this word (repeated as it is in the second part of the definition, relating to functionality) which has caused me considerable difficulty. Lord Reid said:
I fully accept that interpretation, as I am bound to do. Having regard to the whole of the evidence it is a reasonable conclusion that it was the usefulness of the articles alone which governed their ultimate shape, although the designers were not oblivious to the importance of appearance and the resulting shapes were in fact pleasing to the eye. I think it is possible that a customer "might choose articles of those shapes because he thought that the shapes made them more useful to him". No reasonable person could assert that visual appearance is unimportant in a toy and the judge certainly did not do so. He concentrated his attention on seeking to find some “embellishment” of shape which was there solely for the sake of appearance and which had no usefulness. Thus it was his view of the importance of function in the design of these components which led him to hold that Interlego’s designs were excluded not merely by the second (negative) part of the definition but also, if less clearly, by the first (positive) part. He looked for some feature of shape which served no useful purpose, and found none. Although he did not expressly reject the opinion in the “Newson Report” that
his conclusion is inconsistent with it; the features of shape were all necessary to make the item function as a brick and there was nothing “additional to or supplementary to what was functionally needed … there was nothing extra. There was nothing that could be regarded as any kind of embellishment”: see per Lord Morris in Amp at p.113 1.26. He thus put the Lego brick in the category of the electric terminal and not in the category of the flower-vase cited by Whitford, J. as an example of an article having obvious eye appeal. Jones, J.'s view has this merit, that whereas a vase may often be displayed by itself, without flowers, a Lego brick is unlikely to be looked at otherwise than as a constituent part (or prospective constituent part) of a model. However, that merely shows that the example is not necessarily a perfect one. 7. What was the “function” of the features of shape in question? The bricks were components in a construction set and were intended for building models, including models of houses. Houses are built with bricks, and, the intention being that the model houses should be built with model bricks, ideally the shape of the model brick should follow exactly the proportions of the standard building brick (although the addition of a practically invisible radius on the edges would be acceptable to improve its function as a toy at the expense of its function as a model.) Scale was not important, that being a feature of design which was not registrable. It was not feasible to have a bare brick: the use of anything in the nature of mortar was not contemplated and would have destroyed an important feature of any toy - re-usability. It was necessary to design a brick which had these qualities - lightness, indestructibility, reasonable cost of production and, above all, an interlocking facility which would not only hold the bricks together in convenient relationships but which would enable them to be separated and used again. It was the interlocking facility which made a departure from the shape of the standard building brick inevitable, but the smaller that departure the greater would be the realism achieved in the finished model. If one were to avoid unduly breaking up the basic contours of a standard brick, the only course open was to provide projecting lugs or studs, but these would have to be as low as possible, bare of unnecessary sharp edges and so positioned as to enable the bricks to be interlocked as in the customary bondings. On a standard brick no other than the 2 x 4 arrangement of studs was possible: a single row of studs could lead to pivoting and more than two rows would produce a diameter of each such as to make the studs sharp and dangerous. The round section of the studs was equally necessary to avoid sharp corners. Prima facie, therefore, the shape of the top and of the four sides of the brick was not only dictated by its function but was not such as could be judged solely by the eye. Thus, because Ex. X3 has studs which are unduly high and has proportions different from those of a standard brick, its shape not merely does not have the same visual appeal but also is less functional. However, that there was still room for differences of design can be seen from a comparison of Ex. X2 with Interlego's Ex. L6. Tyco's choice of the same dimensions of stud as in the lego brick was purposely to achieve compatibility with those bricks, and compatibility was not necessary to the function of the brick as a toy building brick. 8. The underneath of the bricks offered greater scope for differences of design, because it could not be seen when the bricks were in use. A comparison of Ex. X2 with Ex. 16 again demonstrates possible alternative designs. From the purely aesthetic point of view some customers might prefer the symmetrical design of Ex. X2, whilst some might prefer the “uncluttered” design of Ex. L6, but would anyone choose EX. L6 rather than EX. X2 purely, on appearance, having regard to the sharp edges which the latter inevitably produces? It is difficult to say that he might not and there was evidence that he probably would. Lord Reid said in Amp of the limitation imposed by the words “judged solely by the eye” at. P.108 1.26:
On that basis and on the evidence adduced it seems to me that it was not open to the judge to find that the Lego brick had no eye appeal. 9. Jones, J. may have had lingering doubts on that aspect of the matter, but he was clearly of opinion that the designs were dictated solely by, in the sense of being solely attributable to, function. It is, of course, true that Interlego set out to make components which were attractive to look at as well as functional, but throughout the development of the product the emphasis was on function and all the alterations it subsequently made were either to reduce cost or to improve clutch power. Bearing in mind that the basic shape of the 2 x 4 brick was governed by its function as a model brick, it is argued that there was no evidence that any feature of shape was adopted at any stage simply because it looked better than another: the features of shape were adopted because of functional requirements and the visual appeal was purely incidental. So, adopting the words of Lord Uthwatt in Stenor Ltd. v Whitesides (Clitheroe) Ltd. 1948 A.C. 107, 139 which were cited from a passage applied by Lord Reid in Amp, “there was a mechanical device and nothing else”. In a field where there is so much artificiality that view is one with which I can sympathize, but I am persuaded that it is not a correct application of the law. Lord Uthwatt also said:
Lord Reid in Amp then spoke of a “blend of industrial efficiency and visual appeal” (and by “visual appeal” he clearly meant “eye appeal”). However, the word “dictated” does not have the natural meaning contended for by the unsuccessful respondent in Amp. Evan assuming that Interlego's designers in fact thought only of practical efficiency, in adapting the basic functional brick shape, they did produce a design which might appeal to the eye. Not only does Ex. X2 demonstrate that the Lego 2 x 4 design was not the only design which could achieve the desired function: it shows that the latter design was not such that the “shape possesses no features beyond those necessary to enable the article to fulfil its function” (words of Morton, L.J. approved by Lord Reid at 1972 R.P.C. 110 1.7.). “Capable of Registration” 10. Even if the pre-1973 drawings were “designs” within the meaning of s.1(3) of the Registered Designs Act 1949, the question remains whether the designs were registrable. The point turns upon the further question whether the words "capable of registration under the Registered Designs Act 1949" in para.8(2) of the Seventh Schedule to the Copyright Act 1956 require one to weigh all the matters covered by s.1 of the 1949 Act (including novelty, which is required by sub-s.(2) or merely to be satisfied that there is a “design”, within the meaning of sub-s.(3). Jones, J. took the view expressed by Eve, J. in Stephenson, Blake & Co. v Grant Legros & Co. Ltd. (1916) 33 R.P.C. 406, 415 1.22:
On appeal the Court of Appeal declined to deal with the matter, on the ground that it was an abstract question of law which did not arise between the parties. In Doral Boats Ltd. v Bayliner Marine Corporation (1986 unreported) (“Doral Boats”) the Canadian Federal Court of Appeal was not referred to the judgment of Eve, J. and came to the opposite conclusion. The Canadian case was not before Jones, J., as it was decided later. The basis of the Doral Boats decision was expressed in the following passage of the judgment of Mahoney, J. at p.9:
With respect to that learned judge the Copyright Act does not give “a monopoly”, but there is none the less great force in what he said. The same view is taken by Whitford, J. in Folley and by most of the leading textbooks. On the other side Mr. Aldous submits that there are material differences between our legislation and the Canadian legislation, so that Doral Boats is no authority for the proposition advanced by Tyco, whilst he urges that the Legislature has never sought to take away copyright except in cases where a monopoly has been conferred. He relies upon Usher v Barlow (1951) 69 R.P.C. 27 as showing that something more than the definition of "design" is involved, for it was held that a “design” in existence before 1949 which was otherwise capable of registration was not capable or registration by reason of s.1(4) of the 1949 Act, it being a wall plaque, which was excluded from registration by a rule made by the Board of Trade. Therefore, Mr. Aldous submits, it is clear that “capable of registration” involves a consideration of what is now sub-s.(4) of s.1 as well as what is now sub-s.(3), and there is no logic in excluding a consideration of sub-s.(2). To this Mr. Jacob replies that para.8 of the Seventh Schedule to the 1956 Act was plainly intended to reverse the law laid down in Usher v Barlow. As I understand it, the only case which would be changed by para.8 would be one where the work was made before 1973: it provides that the material date for capability of registration shall be “the time when the work was made” whereas the material date under s.22(1) of the Copyright Act 1911 was the date when the action was brought. The fact that the word “constituted” has. been used in para.8(2) of the Seventh Schedule (see Copinger 83(208)) appears to me to be of no significance, but I think the balance of authority is in favour of excluding novelty from consideration. Novelty of Pre-1973 Drawings. 11. If that be wrong, we have to consider the contention of Interlego, which was accepted by the judge, that the pre-1973 Lego drawings were not, as a matter of fact, novel because they were a copy of the Hilary Page drawings from which the Interlego designers started and that the second generation Interlego drawings were a copy of the first generation drawings, Section 1(2) of the 1949 Act reads:
Novelty is not defined and the only guidance comes from the sub-section itself, which suggests that the novelty must be something other than “immaterial details”. Jones, J. took the view that the issue “had to be decided by the eye as a matter of fact” and he concluded that there was no novelty. The Registrar, who registered the Lego designs, must have come to a different conclusion and, although this is clearly not conclusive, his experience in such matters must give his opinion great weight. Mr. Rogers has pointed out to us in the evidence how the Lego bricks were developed and it seems to me impossible to avoid the conclusion that the design of each generation was different and that, if one has regard to function, the differences were not as to immaterial details although the designs may look very much alike. In my judgment these designs did have novelty for the purposes of s.1 (2) of the Registered Designs Act 1949. Moulds 12. Next the question arises whether Interlego's pre-1973 moulds were "artistic works" within the meaning of s.3(1)(a) of the 1956 Act by virtue of their being “engravings”. The judge held that they were, because ‘undoubtedly’ considerable skill effort and Judgment is required to produce a mould”. In this he followed the decision of the New Zealand courts in Wham-O Manufacturing Co. v Lincoln Industries Ltd. 1985 R.P.C. 127, but Mr. Jacobs submits that that case went too far, and that “Tyco have not taken any part of the work, skill, labour or originality which went into Lego's moulds". For my part I am prepared to follow the New Zealand decision until it is held to be wrong either by the Judicial Committee or by the House of Lords. There is, however, this difficulty which did not arise in the New Zealand case: we have no evidence relating to the making of the relevant moulds. It is possible that the cavities inside the moulds were produced by engraving, but it has not been shown that this was necessarily so. On the evidence, therefore, I think it was not open to the judge to find that copyright existed in the moulds, and no issue of infringement could arise in relation to them. That cannot, of course, affect any rights the Plaintiffs may have in respect of the Tyco moulds used in the production of any components which are found to infringe Interlego's drawings. Originality of Post-1972 Drawings 13. I come, then, to the post-1972 drawings, and the first issue is whether they have “originality”. In MacMillan & Co. Ltd. v Cooper (1923) 40 T.L.R. 186, 190 the Judicial committee approved Peterson, J.’s dictum in University of London Press Ltd. v University Tutorial Press Ltd. 1916 2 Ch. 601, 608:
This applies equally to pictorial works as to literary works. Whitford, J. said in L.B. (Plastics) Ltd. v Swish Products Ltd. 1979 R.P.C. 551 (“Swish”) at p.568 1.30:
Tyco contends that the post-1972 Interlego drawings were merely copied from the previous drawings. It says the 2 x 4 standard brick was, in words which the designer himself accepted, “in principle” a tracing, and counsel relies upon British Northrop Ltd. v Texteam Blackburn Ltd. 1974 R.P.C. 57, 68 where Megarry, J. said at 1.35:
However, I think one must not attach too much "weight to the answer given here, as it was qualified by other evidence given by the same witness. Jones, J. found that “all the drawings required considerable skill, effort and judgment to prepare”. It is said that he dealt with the matter globally” and did not consider the scope of the copyright (if any) in the 1976 drawings, but, even bearing in mind the warning of Lord Templeman in British Leyland at p.630D that:
I think there was ample evidence to justify that finding. It is immaterial that parts of the earlier drawings were copied exactly: even small variations can call for great skill, labour and judgment. In this respect there may be a danger in relying upon cases relating to literary works in cases concerned with technical drawings. The designer and his draftsman (where the designer is not his own draftsman) form a team, and it is the skill, labour and judgment of the team which has to be assessed. I accept, of course that a designer cannot prolong his copyright protection by redrawing the same article and by substituting measurements previously shown in the English system or making insignificant changes in the design merely for the purpose of prolonging the copyright. It is a question of fact and degree in each case whether the new drawing is original. 14. There is one drawing to which I must particularly refer, namely the 1973 drawing (No: 343700) of the 2 x 2 Duplo brick. There was unchallenged evidence that this was produced not from copying a previous drawing (since that had been destroyed), but from copying exactly a brick made from a previous drawing. The question is whether that constituted more than a mere tracing. It seems to me that it required more than what could fairly be described as mere scribing. Great skill and labour would be involved in measuring the brick and calculating the tolerances which could be permitted in manufacture. 15. The judge recognized that it was a question of fact and degree in each case, and the fact that he did not set out the changes between the drawings of each generation in detail in his judgment does not persuade me that he failed to assess them on the correct principles. 16. It is not now disputed that the drawing (No.366700) of the Duplo trailer-wheel (part of Exh.LD8) had originality. In relation to all the other components Mr. Rogers pointed out small but not insignificant changes which were made, and the judge was justified on the evidence in finding that they were made for practical reasons. On the evidence originality was established. Infingement 17. Having thus compared the different generations of Lego components with one another I must now consider them in relation to the Tyco components to ascertain whether the judge was justified in concluding that there had been infringement of the Plaintiff's copyrights. Tyco did not challenge that there had been infringement of any copyright which existed in the pre-1973 drawings other than that of the 2 x 4 roof-tile, but contends that there was no infringement of any of the post-1972 drawings. The judge in his judgment summarized the position as follows:
By s. 48 (1):
and by s. 49 (1):
Megarry, J. said in British Northrop at p.72 1.27:
Mr. Jacob's contention is that the Tyco components are not identical to the post-1972 drawings and that, in so far as individual features have been copied from the Plaintiff's products, the basic Tyco 2 x 4 brick (Ex. T14) includes only one of the six features which made the post-1972 drawing “original”: he emphasizes several dimensions which have not been copied exactly. Put genrally he says that the Tyco 2 x 4 brick looks more like a 1968 Lego brick than a 1976 lego brick. The obstacle which Tyco has to overcome in relation to the 1976 brick is its admission that that brick was in fact copied: but for this admission it would, at least in theory, have been open to Tyco to contend that what had been copied was not the 1976 Lego brick at all but a pre-1973 Lego brick. Mr. Jacob submits that there is no infringement unless the features which make the copyright work “original” have been copied, and he relies upon a passage in the speech of Lord Pearce in Ladbroke, (Football) Ltd. v William Hill (Football) Ltd. 1964 1 W.L.R 273, 293:
That was a case where the work alleged to have been copied was a football-pool coupon, which was a “literary work”. No case has been cited where such a principle has been applied to a technical drawing, but I see no reason why it should not be so applied. Even as to a literary work Copinger says at p .54(137):
An exact copy of an original text would not be a reproduction of the new edition, but if some of the edited portions appeared in the alleged infringement that would be evidence that the infringer's source was the edited version and not the original text. Where the alleged infringer admits an intention to reproduce the edited version (as Tyco admits an intention to reproduce the 1976 Lego brick), he inevitably makes it difficult for himself to contend that he has failed to achieve his intention if any of the features which give the edited version originality has been adopted. It is a question of fact whether there has been substantial reproduction, and that issue is not to be decided by looking at the whole of the bricks and asking whether the Tyco bricks looks more like a 1968 Lego brick than a 1976 Lego brick. However, I am satisfied that the copyright drawing must be looked at as a whole, so that a Tyco brick which infringed a pre-1973 drawing in which copyright subsisted could also infringe a post-1972 drawing of the same Lego component, without copying any of the features which made the post-1972 drawing “original”. The inclusion of one or more of those features may, however, indicate which of Interlego's drawings was in fact copied. I am satisfied that on the evidence before him the judge could have come to no other conclusion than that there had been a substantial reproduction of the 1976 Lego 2 x 4 brick. 18. Complaint is again made that the judge failed to consider each of the other post-1972 Lego drawings individually when deciding that there had been infringement but made a global finding. I do not think he did that. He said that he considered each component and we ought to accept his statement unless there is evidence to the contrary. I find no such evidence. On the contrary he found that there was no infringement by the standard wheel hub (Ex. 19) of the Interlego drawing No. 1-5-05 or by the 1 x 2 windshield EX.T16 of the Interlego drawing No. 367800. 19. For the most part I think the judge was fully entitled to find that there had been substantial reproduction of Interlego's post-1972 drawings, but there are two components which do perhaps call for specific mention. There is a strong argument that the Tyco plate (Ex. T1) ought not to have been found to be an infringement of the drawing of the Duplo plate (Ex.LD9). Interlego contends that Tyco has in effect cut out a 4 x 8 section of the Duplo 6 x 12 plate. Tyco admits that Ex.T1 was a cut out section of Ex.LD6, the forerunner of Ex. LD9. The dispute is whether a substantial part of the drawing of Ex. LD9 has been copied. The only differences on the top are that Tyco has not used Interlego's patented hollow studs, that the height of the studs is slightly less and that Tyco has two “bird-baths” to contain the rough spots at the injection points. Underneath, Tyco does not have the fifth tube in the centre of each square of four tubes, but, in two of the squares, has in its place a small protrusion roughly corresponding to the bird-baths. The tubes are shorter and the webs joining the tubes are bigger. In addition Tyco has cored the underneath of the studs. The question is not whether we would have come to the same conclusion as the trial judge but whether it was open to him on the evidence to find that the Tyco plate was a copy of Interlego's drawing No.419600. I have had some doubts on the matter but have come to the conclusion that we should not interfere with his finding. 20. The only other component which has given me any doubts is the trailer wheel Ex.T21 (Interlego's drawing No.366700). In this instance I think I would have come to a different conclusion from that reached by the judge, as t here seems tome to be insufficient similarity between the designs for there to have been substantial reproduction. I am not, however, prepared to say that the judge was not entitled to find substantial reproduction. The s .9(8) Defence 21. Only if there was prima facie infringement does the special defence conferred by s.9(8) arise: Swish p.646 1.22. That subsection is in these terms:
Mr. Jacob contends that to a non-expert the Tyco components would not appear to be a reproduction of the 1976 Lego drawings. Again, I think that the issue is not whether the non-expert would think that the Tyco 2 x 4 brick appeared to be a reproduction of a 1968 Lego drawing rather than the 1976 Legl drawing: the 1968 lego drawings were not a relevant factor. The burden of establishing the defence was on the Defendants (see, for example, Swish p.636 1.4), and the substance of Mr., Jacob's complaints is that the judge did not deal with each drawing separately and that, had he done so, he would have seen that the defence was made out. The judge set out a passage in the speech of Lord Wilberforce in Swish (1979 R.P.C. 622 1.15) and said:
Counsel has entirely failed to persuade me that it was not open to the judge to reach that conclusion in relation to most of the components. However, in relation to the Tyco plate I have again had considerable anxiety. When one compares the three dimensional articles, the differences appear to me to be less apparent than they do when one compares. EX.T1 with the drawing Ex.LD9 at p. 1612 of the record and the doubts I had as to infringement are increased in relation to this issue. (I bear in mind that the example of Exh.LD9 which was handed to me was not in fact a precise three dimensional representation of that drawing, as its tubes did not have the polygonal section shown in the drawing.) I would have thought that the non-expert who compared the Tyco plates with the Lego drawing would not say that the plate was a reproduction of the drawing. However, the other members of the court take a different view and I am not disposed to dissent. The s.10 Defence 22. Before us Tyco sought to advance an argument based on a section of the Act which was not relied upon before Jones, J. It is a point which arises under s.10 and could relate only to the post-1972 drawing of a component which was designed before 1973: para.8(1) of the Seventh Schedule. Subsections (2) and (3) of s .10 read:
Assuming that copyright subsists in the post-1972 Lego drawings, Mr. Jacob contends that “corresponding” designs were applied industrially by Interlego - namely some of the pre-1973 designs - and that component s produced from those pre-1973 drawings were offered for sale in February 1958. Therefore, he says, there, could be no infringement after a period of fifteen years from February 1958. 23. In my view there is no evidential basis for this defence. Sub-s.(7) provides:
Assuming (without deciding) that the pre-1973 Lego drawings were “corresponding” designs within the meaning of the subsection, there is no evidence that they were applied industrially at a time when copyright subsisted in the post-1972 drawings or that articles to which the pre-1973 drawings were applied were offered for sale at such a time. The width of the Injunction 24. Complaint is made that several items have been wrongly included in the injunction. The first of these is the 1 x 2 wind-shield Ex. T16a. That was an item which was admitted to be a copy of Interlego's drawing No. 3678000 but which had not been manufactured in Hong Kong and had been replaced by a component (Ex. T16) which the judge found not to be an infringement. Tyco had indicated that it had no intention of manufacturing the old version and there was no reason to doubt the genuineness of that indication. I think this item must have been included per incuriam and would delete it. 25. The 1 x 4 roof-tile Ex. T17a has similarly been discontinued, because it was conceded to have been an infringement of Interlego's drawing No.329700. It was replaced by Ex.T17, which, in spite of Tyco's arguments, the judge found to be on infringement of the same drawing. I think it was within the discretion of the judge to include the old version, but it is argued that there is no indication that he applied his mind to the matter and that this item should therefore be deleted. An injunction is not granted as a matter of course, and, not without some hesitation due to my initial reluctance to assume that the judge overlooked the point, I agree. 26. The wheel hub Ex. T19 was held not to infringe any of Interlego's drawings. This likewise was included in the injunction and should be deleted. 27. The pre-school trailer-wheel as fitted to Ex. T5 was, like the 1 x 4 roof-tile Ex.17a, a discontinued product. It, too, should be deleted. Additional Damages 28. The only remaining matter relates to the direction made by the judge that the inquiry as to damages should include “such additional damages in accordance with section 17(3) of the Copyright Act 1956 as shall be found just”. Tyco objects to the fact that the judge at the end of his judgment said:
That was not a direct finding that the conduct of the Defendant had been such as to make an enhanced award appropriate, but it was a conclusion of law which might influence the mind of the Master when he comes to assess the damages. The position seems to be that, although the Plaintiff invited the judge to award additional damages and Tyco argued against such an award, the Plaintiff did not in the end press the judge to decide the issue but asked him to leave the question over to the inquiry as to damages. 29. Before us Mr. Aldous again argued that there was ground upon which an award of additional damages could be justified, but he was content that the direction should be amended by the inclusion in para.4(1) of the judge's order of the words “(if any)” after the words “such additional damages”. 30. I do not think the judge intended in any way to fetter the discretion of the Master by what he said, but it would have been better, once he had decided to leave the issue to the Master, had he said nothing at all on the subject. 31. Mr. Jacobs has submitted that there is no basis upon which an award of additional damages should be made and that we ought not to leave the matter to the Master but to dispose of it once and for all on that ground. It has been discussed before us at length and I am satisfied that we can properly do as Mr. Jacob asks. It has not been suggested that any further evidence could be placed before the Master and, with respect to the judge, I think he attached undue weight to the removal of the moulds from Hong Kong. There was deliberate copying but Tyco was acting or advice and was never in flagrant breach of the Plaintiffs' rights. Tyco could not have been more open as to its intentions than it was in its 1etter of 25th May 1984 (p.2375 of the record) when it invited objection. The judge referred the issue to the Master on the ground of flagrant breach and I think the evidence fallshfar short of establishing that. Conclusion 32. We are all agreed that the appeal must be allowed in part. If the parties can agree a minute of the Order which should be made (including any order as to costs), this may be submitted. Failing that we will hear counsel on a date to be fixed not later than 30th April. Fuad, J. A.: Introduction 33. On 20 March 1986, Jones J. found for the Plaintiff, Interlego A.G. ("Lego") in a copyright infringement action, against the 1st Defendant, Tyco Industries Inc. (“Tyco”) and the 2nd Defendant, Tyco (Hong Kong) Ltd., Tyco's subsidiary. His Order granted Lego an injunction restraining the Defendants from infringing Lego's copyright in their drawings of certain childrens’ building bricks, accessories and moulds, together with appropriate consequential relief in the form of orders for delivery up and inquiries into damages, including damages for conversion. 34. Lego carried the day on every issue of real significance in the controversy which brought the parties before the learned judge. Tyco and their subsidiary now appeal to this Court. (i) The governing statutes 35. The statutory law with which we are principally concerned is to be found in the Copyright Act 1956 of the United Kingdom, as extended to Hong Kong, with effect from 12 December 1972 by the Copyright (Hong Kong) Orders, [in Council] 1972 and 1979. The modifications specified in Part II of the Schedule to the Orders have no relevance. 36. I would mention here that the United Kingdom Registered Designs Act 1949, which falls to be construed in relation to some of the important issues arising on this appeal, was not extended to Hong Kong in the same way. Instead, the United Kingdom Designs (Protection) Ordinance, Cap.44, provides that, subject to certain of its provisions, the holder of a U.K. registered design is to enjoy, in Hong Kong, the like privileges and rights as if the U.K. certificate of registration had been issued with an extension to Hong Kong. The treatment of registered designs in this way might present problems, and cannot be regarded as wholly satisfactory, but it is not suggested that this is a matter which need concern us here. (ii)Background 37. The story of Lego is one of immense, and, if I may say so, richly deserved success. From small beginnings, as well as their factory in Denmark, they now have two factories in Switzerland and one in West Germany. There are about 40 companies in the Lego Group. It has been estimated that between 200 to 300 million of the world's children play, or have played, with Lego. 38. The Lego system, developed over a period of more than 30 years, includes basic components (such as the building bricks), functioning components (such as wheels, hinges and gear wheels), decorative components (such as trees and flags) and figures providing a model human dimension. 39. Tyco are a long-established toy company in the U.S.A., with factories there and in Hong Kong. The evidence showed that when computer games made a serious impact on the traditional toy trade, Tyco, in 1983, investigated the children's building-brick market in the U.S.A. They decided that since Lego had built up such dominance in this field, the only way to compete with them was to make a system compatible with Lego. They took advice in the U.S.A. as to their legal position and went ahead with their plans. In the U.S.A., all but one of Lego's designs were no longer covered by United States patents and design patents. A patent for the Lego Duplo brick was, however, still in force and so they designed their larger bricks in a way which would not infringe the Duplo patent. 40. In the summer of 1983 Tyco examined and measured a number of the basic Lego components in great detail so that they could adopt their key dimensions, and precisely copied them. They launched their new product at the 1984 New York Toy Fair. This was in February, and at the Fair, Tyco showed their pre-production samples to representatives of Lego, and indicated their intention of manufacturing in Hong Kong. At the time, Lego made no complaint. 41. We are told that it was not until March 1984 that Tyco first considered, and became concerned about, their position under the law of Hong Kong, although they never intended to sell their new products in Hong Kong. 42. Tyco heard nothing from Lego and so they caused their solicitors, by a letter of 25 May 1984, to address Lego as follows:
43. Lego responded by instituting the proceedings which led to this appeal. On 23 June 1984 they obtained Anton Piller relief against Tyco and issued their writ two days later. 44. Tyco's introductory catalogue for 1984, published in the U.S.A., demonstrates the extent to which they copied the Lego system. It proclaims: “For the price of Lego, you get more “Tyco”, and then:
45. Tyco, took a calculated commercial decision on the basis of the advice they had received - that they were legally free to act, both in the U.S.A. and in Hong Kong, as they did. But it is not, perhaps, surprising that Lego wished to use the law, so far as it was available to them, to shackle this powerful competitor. And so the matter reached the courts. The hearing before Jones J lasted 19 days and we heard the appeal over 15 days. In a careful, reserved judgment, the learned judge dealt with a large number of issues, most of which are still alive on the appeal. 46. The appeal falls conveniently into two parts. Although a few of the issues are common to both, the more important ones are governed by different considerations. This is because the copyright claimed by Lego in respect of their pre-1973 designs is affected by para. 8 (2) of the Seventh Schedule to the Copyright Act 1956, while the copyright protection accorded by that Act to the artistic works Lego created after 1 January 1973 is cut down by s.10 of that Act, as amended by the Design Copyright Act 1968. 47. I propose first to consider the position relating to what I might call the “old works”, which I think must be regarded as the dominant point at issue between the parties, and which Mr. Jacob rightly called “the heart of the case.” "Design" under the Registered Designs Act 1949 48. It was common ground that, as the law stands, Lego would have no copyright in any of their work made before 1 January 1973 if either of two grounds they put forward were to fail. I venture to say that it must be unusual, indeed, for submissions based on either ground to be advanced, not by an alleged infringer but by the proprietor of designs which have in fact been registered. Here I will address the first ground - that they were not designs within the meaning of s.1(3) of the Registered Designs Act, which is in these terms:
49. Lego has, throughout these proceedings, contended that their pre-1973 designs contained no feature of shape or configuration “which in the finished article appeal to and are judged solely by the eye”, and that even if they did possess such features, they were “dictated solely by the function which the article to be made in that shape or configuration has to perform.” The judge's conclusions 50. On the matter of eye appeal, before a brief summary of the evidence, Jones J. said, of Lego's evidence: “..... all the witnesses who gave evidence ..... apart from Mr. Rotne ..... said that the Lego brick has both a function to perform and is attractive to the eye.” After citing a passage from the speech of Lord Morris of Borth-y-Gest in Amp, Incorporated v. Utilux Proprietary Ltd.[1] and referring to some of the earlier cases cited to him, the judge said:
51. The learned judge then considered the second limb of the relevant definition and, after citing further passages from the speech of Lord Morris, said this:
52. As the judge appreciated, this issue demands a careful consideration of the decision of the House of Lords in Amp v. Utilux. Evidence on “eye appeal” 53. Before turning to consider the definition of the word “design” in the 1949 Act as it was interpreted by their Lordships in that case, I think it to be necessary to review the evidence that was before Jones J. about the eye appeal of the Lego/Duplo bricks, to which our attention was drawn by Counsel. (i) The experts 54. I will first refer to the expert evidence relied upon by Tyco. Professor John Newson and his wife Dr. Elizabeth Newson prepared a joint report. They are developmental psychologists on the academic staff of the University of Nottingham. I will not list all their impressive qualifications, but they have very wide experience in research on toy design and have written numerous articles and a book on toys. They have run their own specialist toy shop for 14 years and are consultants to the toy trade in the design and function of toys for young children. Their report deals with the leading interlocking bricks currently available, many of which were exhibited in evidence. They comment upon and compare the colour, surface texture, finish and feel of the different bricks, and the plastic of which they are made. 55. While it is clear that these features are very important to the appearance of the bricks, the Newsons deal with shape too. For example, in discussing the Kawada bricks they say: "To our taste this brick is slightly too high to look quite right, and this fault would be cumulative as the bricks were built up." As to the Tente bricks, in referring to their inside structure when compared with the Lego and Tyco bricks, they comment: "We prefer the cylinder arrangement aesthetically, as it gives a less 'bitty' appearance, but this might be a matter of taste. " On the studs which are a feature of all the bricks, in relation to the Lego and Tyco bricks they conclude: “The Lego/Duplo cylindrical studs might be thought to give a slight more interesting appearance.” 56. Later in their report, the Newsons say that they have always thought that the Lego/Duplo bricks had visual appeal in themselves apart from the accessories which make up the sets. In published works about good toys for handicapped children, and for children between 2 and 6 years of age, they recommend Duplo - "We would hardly have done this if we had thought the basic pieces were unappealing to the eye” 57. I will now read para. 4.3 of their report which I consider of particular importance:
58. After referring to claims made by Lego in their literature about the visual appeal of their bricks (most of the references are to the bright and “appealing” colours of which they are made, but there is a reference to the “chunky” appearance of the Duplo bricks) they say, in para. 4.6:
59. And this is how the Newsons conclude their report:
60. There is an important passage in the re-examination of Dr. Elizabeth Newson (her husband did not give oral testimony). I quote from the transcript:
61. Professor Height, who is Head of the Department of Industrial Design at the Royal College of Art in London (a major postgraduate university institution) also produced a report. He is a member of the U.K. Design Council, and designs, inter alia, consumer goods in plastic. His report begins by addressing the basic design principles applicable to the design of products which are, and products which are not, largely functional. Paras. 2.4 arid 3 of his report are in these terms:
62. The Professor then discusses the general characteristics of the appearance of the Lego design of bricks. He lays great stress on the colour and finish of the bricks but comments that: “The planes of the surfaces [of the bricks] are immaculate and as a result coincide at crisp and equally immaculate corners." He concludes this section of his report by saying:
63. Professor Height goes on to analyse the Lego design in great detail, but before doing so, he remarks: "Perhaps the most important visual feature, however, is in the arrangement of the locking device ....". In discussing the height of the bricks, he points out that: "This dimension does not arise automatically as a function of the plan size but as a variable established as much as anything else by judgement. " He adds that; as it happens, "the height chosen gives an end shape to the brick which corresponds very closely to the proportions of the 'Golden Section'" which, he explains, “is a geometric proportion the recognition of which dates back at least to Euclid". The proportion chosen, which, he acknowledges was unlikely to have been deliberately selected to conform to the “Golden Section”, in his opinion, resulted in a proportion which was "inherently pleasing". 64. About Lego's interlocking mechanism, the Professor has this to say, in para. 7 of his report:
65. Professor Height then examines and discusses the particular qualities of the Lego brick as compared with examples of competitive bricks in the toy market, I will not read all that he says in this part of his report, but it is plain that the Professor's comparisons were by no means limited to colour, finish, quality of plastic used, and function. He speaks of different proportions which are "rather gross in comparison with the nice proportions of LEGO .....": of "visually less satisfactory" and "busy and clumsy" undersides; and of "lack of visual smartness" in the studs. 66. The Professor concludes his report with the following summary:
67. In a supplementary report, Professor Height, inter alia, discusses the Kawada brick, and as to its design, he has this to say:
68. When Professor Height was cross-examined by Mr. Aldouson on his reports, in relation to his supplementary report, the Professor explained that what he was there saying was that the function the Lego brick had to perform did not require it to be in the shape in which it was formed, and that even though each part of the brick might be attributable to a function it had to perform, it could be made in different ways. 69. Mr. Edmund Kak Sun Young also furnished a report. He is the Vice-President of a Hong Kong company which manufactures and sells toys, including toys made from plastic. He has been in the business for some 20 years and is a qualified civil engineer. He was asked to examine the Lego bricks and to compare them with two other makes. All the bricks were red in colour. About bricks made by Folley, he said their edges were “not defined” and their studs “clumsy”. He said much the same about the Tente bricks, describing their studs as “busy and untidy”. As to the Lego brick, his opinion was: “Its design is simple and clean as demonstrated by the design of its lines, its underside and outside studs. The layout of the studs are more eye appealing as compared to the roughness of the Folley one.” 70. Mr. Young ended his report in this way:
71. In cross-examination by Mr. Aldous, Mr. Young was shown a mock-up brick specially made by Lego of a dull brown colour, in inferior plastic. He agreed that it was poorly made, and while the design was alright, the finish was very poor. He accepted that the overall colour was "nastier" than that used for any other of the bricks which had been exhibited. He readily acknowledged that that particular brick: “has really no eye -appeal at a all.” 72. Mr. Lam Hin Tong supplied a short report. He is a Fellow of the U.K. Society of Industrial Artists and Designers and a Committee Member of both the H.K. Polytechnic's Advisory Committee on Design and our Industrial Design Council, in addition to other impressive credentials which qualify him to express an opinion on the question. In his view, in the field of designing toys for children “the criterion of aesthetics is of vital importance and hence cannot be neglected.” After discussing the Lego design, he states his conclusion in these words:
73. In cross-examination by Mr. Aldous, Mr. Lam accepted that the features of the Lego brick were attributable to the fact that it had to fit with another brick. However, while he agreed that when considering eye appeal, good material, and good finish (including colour) were important factors, he added: “….. but first you have to have a good design.” He then acknowledged that the design features were there to co-operate with another brick. (ii) The other witnesses 74. I now turn to part of the evidence given by Mr. Bernhard Bodnia. He was called by Lego and was closely involved with the design of the “First Generation” Lego basic bricks. Lego copied the earlier Hilary Page design of their Kiddicraft bricks but made a few alterations. I will now read a passage from the transcript of Mr. Bodnla’s cross-examination. For reasons I will presently explain, I consider that what he said is of considerable importance. The f1ollowing exchange took place between him and Mr. Jacob:
75. I now pass to other evidence on eye appeal, this time given by Mr. Godtfred Christiansen who has been closely involved with Lego since he was 12 years of age. He took over control of the Lego empire from his late father in 1958. In cross-examination, he readily acknowledged that the Lego system, with its good finish and strong colours, was intended to be attractive to children. He accepted that the very simplicity of their design had an appeal, and that as a general proposition it was important to make toys that worked well, looked good and felt right. All these factors were important, he agreed, and they had, indeed, always paid particular attention to the appearance of their bricks. 76. Mr. Christiansen was also ready to accept that their literature emphasised the appearance of the Lego system. The single, giant-size Duplo brick erected in front of their factory in Switzerland was used as “a kind of sculpture to be admired”. He more grudgingly acknowledged that if the Lego logo did not appear on every stud, the brick might look less attractive. 77. In respect of an earlier version of one of the Lego bricks which had “castellations” underneath, Mr. Christiansen agreed that the earlier model looked “pretty messy” and that this was why they had stopped making the bricks with that feature. When shown five similar sized bricks, and asked which was the nicest of the lot, he answered: “To me, there are no two ways about it”, the Lego one was the nicest. 78. Mr. Christiansen also expressed the opinion that the Tente brick, when compared to his, looked “a bit weak and delicate”, and “untidy”, which made it “a less pleasing thing to look at.” 79. Mr. Christiansen was asked about the letter written on Lego's, behalf to the Designs Registry in London, which succeeded in overcoming the Registry's preliminary objection to the registration of a design for a particular Lego component on the ground that the shape (or configuration) of the design was dictated purely by the function which the article had to perform. The paragraph referred to him contained a passage asserting that toys, by the very nature of the users of such articles, having to be designed primarily to appeal to and be judged by the eye. About this paragraph, Mr. Christiansen said: “Well, this sounds quite reasonable.” 80. As to an earlier application to the Designs Registry made on behalf of Lego, during which it was insisted that the knobs on a Lego wheel were ornamental (to controvert the Registry's objection that there were no features of ornament on the designs put forward) when asked about the stand taken, Mr. Christiansen was prepared to agree that the knobs were both functional and ornamental. 81. Mr. Henning Skovmose is the Lego Group's Danish lawyer, and has been working for them for about 18 years. He was shown the letter to the Designs Registry about the primary aim of a toy designer - to design a toy that appeals to and is judged solely by the eye of a child. He said that that made sense, but he was only a lawyer. But he then acknowledged that such an aim was "one of the major things." He also accepted as being valid, the passage in the letter which said that “a toy designer must have in mind firstly, the attractiveness of the appeal to the eye and secondly, the suitability or function when he designs a toy.” 82. Apart from the contentions put forward on their behalf to counter what I might call the positive evidence of eye appeal, Lego rely upon other evidence to show that the features of their bricks were all attributable to their function. Mr. Richard Grey, the President and Chief Executive of Tyco, in the course of his crass-examination by Mr. Aldous, was eventually prepared to accept that the material, size and shape were all reasons why Lego bricks functioned in the way that they did. He also acknowledged that if one changed any part of the Lego brick there would have to be a consequential change to a part on another element. 83. Later in cross-examination, when asked whether he would agree that all aspects of the Lego brick were functional, he answered: "No, I don't agree with that, but I don't disagree. I am just not qualified to even comment on that." After being Dressed to indicated if there was any aspect of the brick which was other than functional, the transcript shows what Mr. Grey said:
84. A little later on, the following exchange took place:
85. Mr. Don Martin, Tyco's Vice-President of Engineering was taken through every feature of the Lego brick in cross-examination by Mr. Rogers, and he answered “yes” to the final question: “Now, I think, Mr. Martin, we've looked at every item of the Lego block that I can think of and each is there to perform the purpose which we have talked about [function]. Would that be correct?” 86. Lego relies heavily upon the evidence of Mr. Bent Rotne who has been working for them for the past 20 years or so, first as Advertising Manager, then as Marketing Manager, and later as Vice-President (now Senior Vice-President) with responsibility for marketing, planning, international research, sales planning and advertising. He explained Lego's basic marketing strategy, which was not to sell individual bricks as bulk but to sell ideas and possibilities and to underline all the different models that could be built from the bricks - they were selling a complete system and this was the idea of their toy. This had been their strategy from the very beginning and they showed, and continued to show, on their packaging, leaflets, pamphlets and brochures, and in their advertising, the possibilities available from a combination of the different bricks and accessories. While the packaging had been improved over the years, the basic concept had not changed. 87. Mr. Rotne went on to speak in general terms about new lines and more specifically of the introduction of the Duplo range for smaller children, and how they had had to redesign the boxes in which they were sold, to emphasise not the individual bricks but the way in which they could be used to make models, and to underline that, as a construction toy company, they were out to sell ideas. He summed up the general marketing strategy of Lego by saying: “It is to show as many building possibilities as possible and illustrate the flexibility and variety our product gives to the customer.” 88. When Mr. Jacob asked Mr. Rotne why he thought that Lego had, by a long way, been the most successful of that type of brick, he replied:
89. Mr. Rotne's evidence makes it clear that, in his view, much of Lego’s success had been due to strong marketing, and when asked to explain this to the Court in re-examination, he said:
(iii) Amp v. Utilux 90. I leave the evidence for the moment to discuss Amp v. Utilux1. There, electrical terminals had been designed to be used inside Hoover washing machines. In an infringement action relating to the registered designs of the terminals, the Plaintiffs failed before Lloyd-Jacob J. on the grounds (a) that the designs lacked novelty or originality and (b) that the alleged novel or original features were dictated solely by the function the article made from the designs had to perform. The Court of Appeal reversed the decision of the trial judge, holding that the objection that the features of a design were dictated solely by the function which the article had to perform was only made out where the article's function for successful performance required the article to be made in that shape and no other, and this was not so on the facts. The design was therefore valid. The House of Lords rejected this interpretation of s.1(3) of the 1949 Act and restored the decision of the trial judge. 91. I think it is important first to note what Lord Reid said, at p.107, about the policy of the Act:
Later, at p.108 when Lord Reid is construing the words “judged solely by the eye" which occur in the first part of the definition he says:
92. I interpose here Lord Morris' observation, at p.112, that:
93. In his further consideration of the words “judged solely by the eye” Lord Reid said also at p.108, that these words "must be intended to exclude cases where a customer might choose an article of that shape not because of its appearance but because he thought that the shape would be more useful to him." He went on to point out that where articles such as the terminals were sold to be incorporated into machines, it might be possible to prove that no manufacturer wishing to buy the terminals as components would be influenced by their appearance, being concerned only with their suitability for the use proposed to be made of them; but he did not intend to consider whether the appellants might have succeeded on that ground, for this aspect of the matter had not been fully explored in evidence. 94. Lord Reid (with whom Lord Donovan agreed) in discussing what he called “the final limitation” in the definition said this at p.109:
95. Lord Reid concluded his speech by referring to Lloyd-Jacob J.' s remarks about “a sense of unreality in endeavouring to relate the product of an avowedly functional exercise to the requirements of an Act which offers protection for attempts to provide individuality of appearance” adding, at p.110:
96. I will now read a passage from the speech of Lord Morris at p.113 which I respectfully consider to be most helpful in resolving this particular issue:
97. Lord Morris ended his speech with these words, at p.115:
98. Viscount Dilhorne was of the opinion that the designs of the terminals satisfied the first part of the definition and would have upheld the registration were it not for the second part of the definition. About that, he said at pp.118-9:
99. Lord Pearson agreed with Lords Reid and Donovan that the words "which in the finished article appeal to and are judge solely by the eye" imported a limitation in the words which preceded them in the first part of the definition. He expressed the view that the design had no feature of shape or configuration which appealed to the eye and that it could not validly be registered for that reason - it did not satisfy what he called the “positive” part of the definition. At pp. 122 and 123 he had this to say:
100. Lord Pearson's conclusion was expressed in these words, at p .124:
(iv) EvaluatIon of eye appeal evidence 101. It seems, from the first passage I read earlier from the judgment of Jones J., that he did not find any of the evidence on eye appeal of assistance because, in his view, the witnesses did not appreciate what was meant by eye appeal in s. 1(3) of the 1949 Act. He felt that all the evidence could be discounted because it concentrated on the striking colours and the excellent quality of the Lego brick. 102. In my respectful judgment, the learned judge erred in his approach to the evidence about the eye appeal of the bricks. When witnesses are giving their opinions about the appeal to the eye of a particular finished article, they will, no doubt, take into account, and be influenced by, such matters as the colour of the article, its finish and the quality of the material of which it is made. It seems to me, however, that the evidence I have attempted to summarise, shows very clearly that the witnesses called by Tyco, and the experts whose reports were relied upon, did not confine their consideration of the visual appearance of the bricks to the factors I have mentioned, and their opinions, which were hardly challenged, established convincingly that the Lego bricks had a strong visual appeal by reason of their inherent design. All the evidence was really one way. 103. In my view, the fact that Mr. Young accepted, in answer to Mr. Aldous, that the dull brown mock-up brick made in inferior plastic had no eye appeal at all (and only he was asked about that brick) does no more than demonstrate that if major eye appeal features (namely colour and quality of plastic) are present in a very unattractive form, the overall eye appeal of the brick can be destroyed notwithstanding its attractive design. In my judgment, what has to be determined on the evidence, is not whether a customer would only be influenced in selecting a Lego toy brick by the eye appeal of its shape and configuration, but whether that shape and configuration has eye appeal of the kind envisaged by s.1(3) of the Registered Designs Act, which will influence the customer in his choice of a toy brick. Clearly no customer who has a choice will be influenced to select a toy brick produced in an unattractive colour and made of inferior plastic. While colour and quality of plastic are major characteristics influencing the customer's choice, so, too, is the shape and configuration of the brick. If a brick were produced in an unattractive colour, a customer could equally be dissuaded from choosing it, even if it were made in excellent quality plastic and with an attractive design. However this, in my opinion, would not; establish that quality of plastic and design were not major factors influencing the customer’s choice. 104. There was pertinent evidence, too, about the importance attached to visual appeal by toy designers in general, and concerning what must have been the aim of the Lego designers to that end. I would have thought that this was self-evident, and a commonplace truth. This is supported by the' letter dated 8 August 1973 sent to the Designs Registry in London to which I have already briefly referred. This letter was composed with great care, after consultation with Lego, and dispatched with their approval. And, as we have seen, Mr. Christiansen still thinks that the second paragraph of the letter "sounds quite reasonable". I make no apology for reading it in full:
105. In my view, Mr. Rotne's evidence about the success of the Lego system being, very largely, due to what was called “strong marketing”, does not affect the cogency of all this compelling evidence. No doubt clever packaging and imaginative advertising etc. was a vital factor in the huge sales Lego achieved in the toy market, but sales would soon dry up if the toys did not look good however they were packed, presented and advertised. 106. The learned judge also said that “nothing has been added as a embellishment to the brick to constitute a design ....” He was, no doubt, reflecting the use of the word "embellishment" by Lord Morris in his speech in Amp v. Utilux1. However, as I read his opinion, Lord Morris was stressing the need for characteristics over and above the fundamental form of the article in question. Lord Morris had cited, at pp.112-113, what Lord Avonside had emphasised in G.A. Harvey & Co. (London) v. Secure Fittings Ltd.[2]: that for a design to appeal it “must be noticeable and have some perceptible appearance of an individual character”, noting that the finished article in that case was “of a distinctive shape or configuration which appeals to the eye and that shape or configuration is an addition to or embellishment of the fundamental form of such a unit ……..” [my emphasis]. 107. Lord Pearson cited Lord Avonside’s speech at greater length, and at p.121, said, referring to a number of earlier cases: “There must be in some way a special, peculiar, distinctive, significant or striking appearance - something which catches the eye and in this sense appeals to the eye.” 108. In my judgment the evidence demonstrated conclusively that the design of the Lego brick appeared to the eye to possess features of shape and configuration which went beyond the basic features which one would expect to see in the fundamental article with which it is to be compared, whether it be a simple toy brick or one designed to interlock with another. In this sense there was an “embellishment”. 109. With very great respect to the learned judge, I am left in no doubt that on the evidence the first or positive part of the definition of “design” in s.1(3) of the 1949 Act was satisfied by the design of the Lego brick. (v) Negative part of definition of “design” 110. As we have seen, Jones J. also held that the second or negative part of the definition would have excluded the design from registration. On this aspect of the matter, quite apart from the evidence led by Tyco, and the assertions on Lego's behalf contained in their patent agent's letter to the Designs Registry which I have just read, I regard the evidence of Mr. Bodnia (to which I drew attention earlier) for Lego, of paramount significance. It is quite plain that the shape or configuration was not adopted by the designers of the Lego system solely to achieve functional purposes 111. The position in Amp v. Utilux1 was very different. The witness in the place of Mr. Bodnia, a Mr. Collier, had frankly acknowledged that no artistic conception was involved in the design. “On the facts of this case I think it is clear that that [the functions the terminals had to perform] was the sole consideration which actuated Mr. Collier” (Lord Morris, at p.113). And later on the same page, Lord Morris, it will be recalled, observed: "In the present case, the terminal was simply devised so that it could 'do the job' ..... First and last and all the time the key-note was functional success." 112. In my judgment, it is not right to regard the Lego brick as having features of shape dictated solely by function, simply because all the features must be just as they are to enable it to interlock with another Lego brick. It seems to me that whilst the function the “finished article” had to perform was to be a child's building brick which interlocks with other such bricks, the evidence makes it plain, not only that other shapes or configurations could be adopted to meet that end, but that the customer's selection of the Lego or any other make of brick will be influenced by the relative eye appeal of the shapes adopted. I agree with Mr. Jacob that the point here is that, as the evidence shows, other shapes will work just as well, but they will give the brick a different visual appeal. 113. There was here “a blend of industrial efficiency with visual appeal” (Lord Reid, at p.110). The features of shape in question, unlike the terminal in Amp v. Utilux, had “the purpose” and “the result” of “making an appeal to the eye” (Lord Morris, at p.115). 114. On a careful examination of all the evidence that was before the judge, I have no doubt that the eye of customers (adults and children) would be greatly influenced by the appearance of the Lego bricks in favour of buying them rather than other articles of the same fundamental kind. Functional suitability alone would not govern their choice. The bricks had an eye appeal that went beyond considerations of functional efficiency. In my judgment, the features of shape etc. were not dictated solely by function, and so the second or negative part of the definition of “design” is no bar to registration. (vi) Statutory definition of “design” satisfied 115. I reach the firm conclusion that the registrations which were effected were valid, to the extent that they satisfied the relevant statutory definition of "design". A design "capable of registration" 116. The learned judge accepted Lego's submission, which was maintained before us, that if, as he found, the Lego designs lacked novelty when compared with the earlier Hilary Page designs then they were not “capable of registration” within the meaning of that expression in para. 8(2) of the Seventh Schedule to the Copyright Act 1956; and therefore no copyright could subsist in relation to them. It is common ground that these provisions apply to the present case. 117. This is a difficult point, indeed, about which we have heard much reasonable, competitive argument. Paragraph 8(2) of the Seventh Schedule is in these terms:
118. It is necessary to go back a little, however briefly, to discuss the way this provision came about. The Copyright Act 1911 included provision designed to preclude the dual protection of artistic works which could be registered under the current Designs legislation. This was achieved by providing by s.22 that the 1911 Act did not apply to designs “capable of being registered” under the Patents and Designs Act of 1907. 119. The effect of this provision is continued, with modifications, in the 1956 Copyright Act as a transitional measure applying to artistic works made before s.10 of the Act came into force - a section which made different provision dealing with the overlap between artistic copyright and designs registered or registrable under the Registered Designs legislation. The most significant difference between s.22 of the 1911 Act and the paragraph we have to consider, is that the latter makes it clear that the intention addressed by each regarding industrial application is to be determined at the time the work was made. A minor difference, upon which I comment later, between the two sets of provisions is the appearance in the 1956 provision of the word “constituted” before the expression “.…. a design capable of registration under the .... Act.” (i) Lego's arguments 120. Mr. Aldous mounts a formidable argument for his contentions. Para. 8(2) of the Seventh Schedule to the 1956 Act, and s.22 of the 1911 Act could, successively, so easily have said “a design as defined by the …… Designs Act” and they do not. Instead, the formula “capable of registration” was used, and giving these words their ordinary meaning, Mr. Aldous contends, it must have been intended by the legislature that a design which is neither “new or original” (which precludes registration by virtue of s.1(2) of the Registered Designs Act 1949) cannot be regarded as capable of registration. 121. Mr. Aldous relies upon the approach of Eve J. in Stephenson, Blake & Co. v. Grant, Legros & Co. Ltd.[3] who construed s.22 of the 1911 Action that way. Eve J. stated, at p.415:
The order made by Eve J. was discharged by the Court of Appeal[4] but solely on the ground that his decision was based upon hypothetical questions. 122. Mr. Aldous draws support, too, from Usher v. Barlow[5] where the Court of Appeal held that a design was capable of being the subject of copyright if it was not registrable as a design by virtue of Rules made under the enabling powers in s.1(4) of the Registered Designs Act 1949, which permit the Board of Trade to make Rules “excluding from registration” designs for certain categories of articles. 123. In my view that authority does not really assist him. The point before us was not argued and it seems to me that on any view a design cannot be “capable of registration” under the 1949 Act if it is expressly excluded by Rules made under the Act. When one takes into account the kind of articles, the designs for which can be excluded from registration by the exercise of the rule-making power, ("primarily literary or artistic in character") it becomes evident that it was considered that they were more suitable for copyright protection. (ii) Tyco's arguments 124. Mr. Jacob supports his submissions on this issue by relying on a case decided (some three months after Jones J. had given judgment) by the Canadian Fecteral Court of Appeal: Doral Boats Ltd. v. Bayliner Marine Corporation. The transcript of the judgment, dated 13 June 1986, was before us. I should mention here that Whitford J. adopted the reasoning of the Canadian Court in his decision given on 19 December 1986 in Interlego A/C v. Alex Fo1ey (Vic) Pty. Ltd. to which we were also referred. 125. Although the relevant Canadian legislation does not precisely follow the wording of the provisions we have to interpret, s.46 of their Copyright Act also employs the expression “capable of registration”. I think it makes no difference that the word “design” is not defined in the Canadian Industrial Design Act, the meaning of that word having been left to case-law. 126. Mahoney J. gave the leading judgment in Doral Boats (the other members of the Court simply signified their assent). He said this at p.9 of the transcript:
(iii) Text-book writers on Stephenson, Blake 127. Most of the leading text-Book writers cast doubts upon Eve J.'s reasoning in Stephenson, Blake & Co.3. Laddie, Prescott and Vitoria: THE MODERN LAW OF COPYRIGHT (1980), in a footnote to para. 3.71 puts it this way: "If correct, that means that the alleged owner of a copyright today in respect of a work made before 1957 [the position in our case] is better off if he proves that the work was anticipated by some independent third party, a truly astonishing conclusion." 128. The learned authors of Sterling and Carpenter: COPYRIGHT LAW IN THE UNITED KINGDOM (1986) go into the matter at some length, and at page 443 their opinion is expressed thus:
129. Para. 8-305 of Blanco-White: PATENTS FOR INVENTIONS (1974) refers to Stephenson, Blake & Co. and says:
130. As regards the treatment of the question by COPINGER AND SKONE JAMES ON COPYRIGHT (1980) in para. 208, which I will not read, I would only say that in my view the inclusion of the word “constituted” in para. 8(2) would be too slender a basis upon which to found a construction of the paragraph adverse to the contentions of Mr. Aldous on the point. 131. It is only fair to note that the author of another work: Lahore: INTELLECTUAL PROPERTY LAW IN AUSTRALIA (1977) takes a different view on p.283: “It would seem to follow that an artistic work does not 'constitute a design capable of being registered unless the work is both a design within the definition and a design that can be registered ……” (iv) Designs were “capable of registration” 132. I respectfully adopt the reasoning of the Canadian Court of Appeal in the Doral Boats case, and the comments of the authors of the textbooks who question the approach of Eve J. in Stephenson, Blake & Co. I conclude that the true meaning of the expression “a design capable of registration…” is a “design” as defined in s.1(3) of the 1949 Act - one that is inherently registrable. I consider that this interpretation is one that the expression will bear and one which truly reflects the intention of the legislature: that if the work in question is a “design” made for industrial application then the only protection it will receive is by and under the 1949 Act, or under the statutes repealed by that Act. It. does not obtain protection under the Copyright Act by a side-wind; so to speak, if it is otherwise registrable but lacks novelty. 133. If I am wrong about the true construction of para. 8(2) then, for the reasons given by Clough J.A. in the judgment he is about to deliver, I respectfully agree with him that Lego should not, on the facts, have succeeded on the lack of novelty point. 134. Lego has had the commercial benefit of owning a true monopoly in their pre-1973 registrations for their full term and, at least on one occasion, warned off a competitor. And so, questions of estoppel apart, I permit myself to say that I reach my conclusions upon the construction of the statutes, applied to the facts, with a certain sense of satisfaction. No copyright in pre-1973 artistic works 135. It follows that in my judgment none of the pre-1973 (Lego or Page) designs pleaded were protected by copyright. Copyright in the moulds? 136. Tyco all along conceded that Lego must have made moulds for their products but none were produced in evidence, and no drawings for the moulds were exhibited or discovered. 137. Jones J. held that Lego were entitled to claim copyright in the moulds as engravings, for in his view a mould fell within the definition of “engraving” in s.48(1) of the Copyright Act 1956:
138. The learned judge relied upon a New Zealand case, Wham-O Manufacturing Co. v. Lincoln Industries Ltd.[6] That case involved moulded plastic discs ('Frisbees') which are played with by being thrown, so that they float, spinning, from hand to hand. I think that the first thing to be noted about that decision is that there was ample evidence before the Court to prove the form of the materials in which copyright was claimed, even though they were not produced. The position is very different here. Then, it must also be noted, that the decision depended very much on the nature of the articles produced from the mould. It may well be that, as the New Zealand Court of Appeal held, the word “engraving” embraces not only the image made from an engraved plate but the engraved plate itself. But in the present case, the argument being advanced on behalf of Lego is, in effect, that there can be copyright in a mould of an unascertained kind, as an "engraving", if the cavity, when injected with plastic, creates a particular article the part of the mould which is an “engraving”, it is submitted, is the cavity itself. 139. While, respectfully, in no way doubting the correctness of the Wham-O case on its own facts, I do not think it assists Lego. It cannot fairly be said, in my view, that the moulds the judge was asked to infer must have been used to produce the Lego bricks were shown to be “engravings” in the ordinary sense of the word; nor was there evidence to indicate that they came within the expanded meaning of the word as defined - that each was a “similar work” to an “etching, lithograph, woodcut or print”. 140. With due respect to the finding of the trial judge, I hold that there was no copyright in, and therefore no infringement of, the moulds. As I see it, this conclusion does not affect any conversion rights given to Lego in respect of the moulds which may arise from the application of subsections (1) and (3) of s.18 of the Copyright Act. The post-1972 drawings 141. I have had the advantage of reading in draft the judgment about to be delivered by Clough J.A. and, in respect of the issues which divide the parties in relation to the Lego drawings made after 1 January 1973, I respectfully agree with his conclusions on originality and infringement. My views so closely coincide with his analysis of the law and his evaluation of the evidence that no useful purposes would be served were I to embark upon the same exercise. 142. As to originality, for the reasons he gives, I agree with Clough J.A. that the learned trial judge was right in holding that all the relevant post-1972 Lego drawings, identified and discussed in my brother’s judgment, possessed originality for the purposes of copyright. 143. On the infringement issue, I agree with Clough J.A. (gratefully adopting his reasoning) that the judge's finding of substantial reproduction of the relevant post-1972 Lego drawings by the Tyco components pleaded should be upheld, but that the judge's Order in relation to them should, for the reasons explained by my brother, be varied by deleting reference to the six Tyco products he specifies. 144. Again, for the reasons given by Clough J.A., I have concluded that neither s.9(8) nor s.10 of the Copyright Act afford a defence to Tyco for the infringements that have otherwise been made out. In my judgment, the trial judge approached the s.9(8) defence correctly and his findings should not be disturbed. He was not asked to consider the point raised by Mr. Jacob before us upon the effect of s.10. 145. I now turn to address the submissions advanced to us upon what Counsel have conveniently labelled the “estoppel by expired registered designs” and the “estoppel by expired patents” points. Estoppel/ election/ abandonment (i) Expired registered designs 146. Mr. Jacob submitted that since Lego had:
thereby gaining the commercial benefit accorded to the proprietor of the registered designs (and thus dominating the market) Lego should not be allowed to make a complete volte face and now say that their designs were not registrable. Considerations of public policy demanded that once a registered design had expired, anyone should be free to make what was depicted in the design. In effect, Mr. Jacob contended, by obtaining the registrations, Lego had granted the right to the public to make the articles covered by them once the registrations had expired, and they could not derogate from their grant. 147. As he developed his arguments, Mr. Jacob sought to label the principle he was advancing as being some form of public estoppel which the Court should recognise. While conceding that Tyco could not show any personal detriment, Mr. Jacob suggested that they, in common with other potential competitors, must be regarded as having suffered some degree of detriment in that Lego, by benefiting from the monopoly created by their registrations, had achieved a dominance in the market. 148. It is only necessary for Mr. Jacob’s arguments to be met in relation to the drawings made after 1 January 1973 in view of my earlier conclusion that there was no copyright in any of the pre-1973 designs. 149. As to the post-1972 designs, it seems to me that once, as I have concluded, there was sufficient originality in those designs to attract copyright, Mr. Jacob's contentions based on estoppel in any of its forms cannot stand with the statutory intent made plain by s.10 of the Copyright Act, as amended. During the relevant period of 15 years, the works are protected to the extent provided for, and Mr. Aldous is surely right when he submits that it is not open to the Court to give effect to a doctrine of the kind advanced which derogates from the rights accorded by statute. 150. If I am wrong about the effect of s.10, I hope I do no discourtesy to Mr. Jacob's interesting and vigorous submissions by not discussing the authorities he took us through and from which he sought to derive support, for, as he readily acknowledged, there is no case directly in point. 151. While I think it would be permissible to approach a change of stand by Lego of the kind we have here with a measure of healthy scepticism, I am not persuaded that we should recognise the doctrine urged upon us. For the doctrine (whatever label is put upon it) to avail Tyco, they would have to show that they based their conduct in reliance upon the fact that Lego had registered their designs and had, thereby, altered their position to their, detriment. I do not consider that it would be right for this Court at any rate, to attempt to extend well-known principles beyond their presently defined boundaries. 152. It may be, that if what Lego has asserted is rightly to be regarded as unacceptable, it is a matter for the legislature to address. (ii) Expired patents 153. Mr. Jacob, relying principally upon the observations of Whitford J. in Catnic Components Ltd. v. Hill &Smith[7], urged upon us the proposition that on the expiry of a patent there must be an implied licence covering the use by anyone else of the patent drawings on which the article was based. 154. As I understand the final version of the Defence, this matter was raised (in para. 23) only in relation to the Hilary Page patents for two Kiddicraft bricks, but Mr. Aldous said that he did not wish to take a pleading point and so I will consider the question in so far as it affects any of the works which featured in the action and have been infringed. 155. At p.206 or the report of the Catnic case, Whitford J. said this:
156. Whitford J.'s views were, of course, obiter, and I think Mr. Aldous is right in pointing to the concession made by Counsel for the Plaintiffs which is set out in precise terms at p.205 of the report. In my judgment, Mr. Aldous is also right in urging caution lest one reads too much into (or misunderstands) what Whitford J. meant by his use of the expression “in drawings the equivalent of the patent drawings” at the end of the passage from his judgment I have just read. Whitford J had noted, also at p.205, that “Counsel for the defendants indeed accepted that no publication of patent drawings could affect a patentee's rights in more detailed drawings forming no part of the patent disclosure.” On the facts before us, where, infringements have been shown, these are in relation to detailed working drawings which do not seem to me to be "the equivalent of the patent drawings" in the sense intended by Whitford J. 157. As we know, the plaintiffs' Counsel in Catnic withdrew his concession in the Court of Appeal and that Court did not find it necessary to decide the point. Buckley L.J., at p.224, called it “an interesting question” and, I comment in passing, that he saw it as a question relating to “the enforceability of copyright in substantially identical drawings. 158. When Counsel for the plaintiffs in the Catnic case withdrew his concession before the Court of Appeal, he relied on Werner Motors Ltd. v. A.W. Gamage Ltd.[8], a case upon which Mr. Aldous now relies. There the Court of Appeal held that there was no ground for putting an applicant to an election between a patent for an article and the registration of a design for the shape of a similar article; he could secure both. 159. Mr. Aldous also drew our attention to William Edge & Sons Ltd. v. William Niccolls & Sons Ltd.[9] where the previous ownership of a revoked patent was held by the House of Lords not to prevent the plaintiff from succeeding in a passing-off action. 160. The question has arisen in other Commonwealth jurisdictions. For example, in Ogden Industries Pty. Ltd. v. KIS (Australia) Ltd.[10], Kearney J., in the Supreme Court of N.S.W., referred to the comments of the authors of Laddie, Prescott and Victoria: THE MODERN LAW OF COPYRIGHT (1980) on Catnic at pp.364 - 366, and to Werner Motors and added, at pp.635 - 636:
161. In the New Zealand case, Wham-O Manufacturing Co.[11] Moller J., at first instance, reviewed the question at some length and concluded, at p.299: “.... I have come to the decision that the Catnic defence is, as a matter of law not available in cases such as this ....”. The matter was not argued when the case went before the New Zealand Court of Appeal. 162. In Rucker Co. v. Gavel's. Vulcanizing Ltd.[12], Walsh J. also discussed all the authorities but came to a different view. He was sitting in the Canadian Federal Court. At p.312 of report, we find this:
163. It can be seen that the authorities are in conflict. With all respect to the judges in various jurisdictions who have reached contrary opinions, in my judgment the Catnic dicta cannot readily be reconciled with Werner Motors and I am not persuaded that the latter case was wrongly decided. If I am wrong on the broad principles to be applied, then, for the reasons I have attempted to give, Whitford, J.’s views were expressed in terms which permit Lego's assertion of copyright in their detailed working drawings. 164. I respectfully agree with Jones J. that neither the estoppel point, nor the expired patent point, afford a defence in law to Tyco's infringements of Lego's copyright. 165. As Lord Hailsham of St. Marylebone pointed out in L.B. (Plastics) Ltd. v. Swish Products Ltd.[13], at p.631, “…… we must take copyright law as we find it.” In my judgment, if as a matter of public policy the position in law as I see it is regarded as unsatisfactory, it is for the legislature, and not the Courts, to put right. Additional damages: s.17(3) of the Copyright Act 166. Lego claimed additional damages under s.17(3) of the 1956 Act by their Indorsement of Claim (repeated in the Statement of Claim). We were given to understand that Mr. Aldous, in opening, invited the judge to consider awarding such damages. Mr. Jacob, in turn, submitted that no such award should be made on the merits. Mr. Aldous then suggested that the matter should be left open to be decided by the Master at the inquiry into damages. 167. Section 17(3) of the Act is in these terms:
168. This is how the learned judge dealt with the issue:
169. This decision, it seems, was intended to be reflected in para. 4(1) of the Order drawn up:
170. Mr. Jacob has argued that the judge was wrong in principle to make a prima facie finding as to flagrancy. He contended that in all the circumstances the judge should have resolved the matter one way or another and, indeed, should have held that Lego had not established their right to such damages. 171. The position taken by Mr. Aldous on this appeal was consistent with his stand before the judge. He submitted that the right course would be to allow the Master to look into the whole matter in the round, and if Lego could establish a right to additional damages at the inquiry, then such an award should be made. 172. I am of the opinion that we should decide the question rather than leave it in its present somewhat unsatisfactory state. I think the convenience of the parties will be better served if we do so, and all the relevant material is before us. We must, while giving due weight to the preliminary views of the trial judge, bear in mind that this Court has held that there was no copyright in the pre-1973 designs, which gives the case a rather different complexion. 173. Brightman J. (as he then was) considered the meaning of the word “flagrancy” In s.17(3) of the Act in Ravenscroft v. Herbert and New England Library Ltd.[14], where, at p.208, he said:
174. In Nichols Advanced Vehicle Systems Inc. and Ors. v. Rees, Oliver and Ors.[15], Lord Templeman (as he now is) had found flagrancy because “the defendants, by stealing a march based on infringement, received benefits and inflicted humiliation and loss which are difficult to assess in the normal course”. 175. There can be no doubt that Tyco deliberately copied some of Lego's work but, as the letter of 25 May 1984 from their solicitors to Lego's solicitors which I have read showed, they were acting on legal advice and the truth of this fact was not challenged. We also know that Tyco had revealed their intentions to Lego representatives in February 1984 at the New York Toy Fair and were met with no immediate adverse reaction. The May 1984 letter sent to Lego on their behalf brought the whole matter out into the open. 176. If my conclusions are right, Lego has failed to justify their assertions of copyright in respect of some 35 drawings out of 52 (if my calculations are accurate), assertions which could not stand with their submissions to the Designs Registry in London. The “novelty” point in connection with para. 8(2) of the Seventh Schedule to the 1956 Act was not originally relied upon, and failed on the facts. 177. As regards the copyright which has been infringed, while the copying was deliberate and calculated, I venture to express doubt, whether the infringement can be so described. There was nothing to snow that Tyco's position was not taken bona fide. 178. In respect of the mould, the copyright which was asserted in them has not been established, and with due deference to the learned judge's approach, I am unable to view Tyco's action in removing their moulds from Hong Kong as disreputable when all the circumstances are taken into account. 179. In my judgment this is not now (if it ever was) a case for the award of additional damages under s.17(3) of the 1956 Act, whether based upon flagrancy alone or combined with any other material consideration. Summary of conclusions 180. For convenience, I summarise my conclusions:
181. I would, for the reasons I have given, allow Tyco's appeal to the extent indicated, as reflected in paras. 2; 3; 4(b) and 6 of my summary, and would propose that the learned judge's Order be varied accordingly. Clough J.A. : 182. One of the principal issues raised on this appeal is whether Tyco was right in contending that all Lego's relevant works existing on the 1st January 1973, when the Copyright Act 1956 came into operation in Hong Kong in relation to those works, were deprived of copyright by virtue of paragraph 8(2) of the Seventh Schedule to that Act. If this issue alone is determined in Tyco's favour, then they must succeed in their appeal in respect of all the pre 1973 works. It is therefore convenient to consider the relevant issues in the sequence followed in his skeleton argument by Mr. Jacob for Tyco, first in relation to the pre 1973 works and then in relation to the post 1972 works, although the issues do to some extent overlap. The pre 1973 works 183. The relevant issues concerning Lego's works arose regarding:-
184. I have had the advantage of reading in draft those parts of the judgment of Fuad J.A. dealing with these issues. I agree with his conclusions and the reasons he gives for them, although I have experienced difficulty with one aspect of the registrability issue. 185. On that issue I am in full agreement with the reasons given by Fuad J.A. for holding that, an the evidence before Jones J. Tyco had established that the Lego drawings constituted design within the meaning of section 1(3) of the Registered Design Act 1949. 186. It seems to me that the judge did not apply the correct test when he observed:-
187. We have had the benefit of the views of Whitford J., with which I respectfully agree, on this passage. In the as yet unreported case of Interlego A/G v. Alex Folley (VIC) Pty. Limited decided on the 19th December 1986, Whitford J. commented on the passage as follows:-
188. In my judgment the trial judge wrongly accepted the proposition that because a function could be attributed to every feature of the brick made in accordance with the Lego drawing it followed that every feature (even if it did have eye appeal) was dictated solely by the function which the brick had to perform and so was caught by the excluding words of section 1(3) of the 1949 Act. I again respectfully adopt Whitford J,'s criticism of the trial judge's approach expressed at page 43 of the Alex Folley Case where he observed:-
189. In concurring with the other members of the court regarding the interpretation of paragraph 8(2) of the Seventh Schedule to the Copyright Act 1956, I have had to overcome considerable initial misgivings. The approach adopted by Eve J. in Stephenson Blake & Co v. Grant, Legros & Co. Ltd.(1) to the interpretation of the words "designs capable of being registered under the Patents and Designs Act, 1907" occurring in S.22(1) of the Copyright Act 1911 seemed to me at first to be right because he gave the literal meaning to the plain words of section 22 (1), a provision which has been substantially reproduced with modifications n paragraph 8(2) of the Seventh Schedule to the Copyright Act 1956. 190. On this basis Jones J. was right to interpret paragraph 8(2) as requiring that a drawing should have all the qualifications required for registration before it could be said to be capable of registration for the purpose of that paragraph. He had clearly accepted Mr. Aldous’s argument that section 22(1) and its successor, paragraph 8(2), was to be construed to produce the result that, provided a work has copyright, no one may copy it unless the owner of the work can obtain the 15 year monopoly afforded by the 1949 Act in respect of a design constituted by the work. 191. The clear intention of the legislature underlying both section 22(1) of the 1911 Act and its successor, paragraph 8(2) of the Seventh Schedule to the 1956 Act, was to avoid the overlapping of copyright and design copyright protection. 192. Thus in British Leyland Motor Corporation Ltd. v. Armstrong Patents Co. Ltd.(2) Lord Templeman referred at page 634 to section 22(1) as a provision which sought to avoid overlap between copyright and design copyright. He then cited a passage from the speech of Viscount Maugham in King Features Syndicate Inc. v. O. and M. Kleeman Ltd.(3) where at p.427 be had observed:-
193. The House of Lords was not in the King Features Syndicate Case concerned with the meaning of the words “capable of being registered under the Patents and Designs Act 1907”, nor was there any issue concerning an original artistic work constituting a design which lacked novelty. 194. In the present case leading counsel on both sides pressed arguments based on anomaly. For Tyco, Mr. Jacob stressed the obvious anomaly, referred to in the authorities and text books cited by Fuad J.A., which results from construing the relevant words in paragraph 8(2) the way the trial judge has done. Such a construction gives the owner of a drawing constituting a design which lacks novelty the longer and in some respects more efficacious protection of copyright compared with the shorter protection accorded to the owner of a novel design constituted by his drawing, which loses its copyright under paragraph 8(2). Mr. Aldous countered with the argument that it would be equally anomalous to construe paragraph 8(2) as depriving the owner of an original work of his copyright merely because the design constituted by his original work had been anticipated by another so that it did not qualify for registration under the 1949 Act. 195. In the end I feel constrained to reject the literal construction of paragraph 8(2) as one which produces an unreasonable result which cannot have been intended by the legislature. I accept, with respect, the approach to this question of construction adopted by most of the text book writers, by the Canadian Federal Court of Appeal in Doral Boats Ltd. v. Bayliner Marine corporation (unreported) decided on the 13th June 1986 and subsequently applied by Whitford J. in the Interlego A/G Case. Jones J. did not have the benefit of the two last mentioned decisions. 196. There is clearly room for two views on the interpretation of paragraph 8(2) but I am persuaded by the learning which has followed the reasoning of Eve J. in the Stephenson Blake Case that the words “capable of registration under the Registered Designs Act, 1949” should be interpreted not literally, but in such a way as to produce a sensible result which does not in all the circumstances involve doing violence to those words. 197. In concurring with the other members of the court on this question of statutory construction I am fortified by the obiter dictum of Lord Romer in the King Features Syndicate Case at page 445 where, in regard to section 22(1) of the Copyright Act 1911, he said:
198. The same view of the combined effect of section 22(1) and the Copyright (Industrial Designs) Rules, 1949 seems to have been held by the members of the Gregory Committee which prepared the way for the Copyright Act 1956. At paragraph 232 of their report the Committee said:
Whilst the beliefs or assumptions of those who frame legislation cannot make the law, I consider that the views of the members of the Gregory Committee quoted above merit respect. 199. In view of our decision on the interpretation issue it is not necessary to decide whether the trial judge was justified in holding that the designs of the Lego and Duplo 2 x 4 and 2 x 2 bricks were lacking in novelty and therefore not entitled to design copyright. However I mention that if I had not concurred with the other members of the court on the interpretation of paragraph 8(2), I would not have held that the judge's decision on the novelty issue was sustainable. 200. The issue appears to have been raised as an after-thought by way of re-amendment in the Reply. No evidence was addressed to the issue during the trial although Mr. Christiansen, who designed the "third generation of standard Lego bricks with the innovation of the inner fixing tubes, gave detailed evidence about the circumstances under which he came to design the new brick early in 1958 and Mr. Ove Nielsen came to make the first detailed drawing of the third generation brick on the 28th January in the same year. 201. The designs of the standard bricks were registered in the Designs Registry as of the 6th January 1960 under registration number 895905. At the same time the designs of a number of other Lego elements were registered as of the same date, including designs allocated registration numbers 895906 and 895907. These registrations were not effected without some difficulty. The Examining Officer raised an objection to the applications for registration on the ground that the designs lacked novelty and cited a number of publications in support of his objection. 202. A letter dated the 22nd June 1960 from Lego's London patent agents to their Copenhagen patent agents reported that on the same day the London patent agents had accompanied Lego’s counsel at a hearing at the Designs Registry in which counsel had persuaded the Hearing Officer not to accept the objection to the registration of the designs, including number 895905. 203. The letter contains the following passage which is material to registration number 895905:-
204. The sequel to counsel's success in persuading the Designs Registry' Hearing Officer to reject the contention of the Examining Officer that design number 895905 relating to the third generation standard Lego bricks was not merely an aggregation of known common features was that the design was permitted to be registered after the statement of novelty had been amended to read: -
205. On the 3rd April 1963 the same design with slight modifications was registered under number 912216 as an associated design under section 4(1)(b) of the Registered Designs Act 1949. There appears to have been no attempt to register the design of the pre 1973 Duplo 2 x 4 or 2 x 2 bricks as an associated design or otherwise. 206. In the particulars to paragraph 2 of the Re-amended Reply raising the novelty issue, Lego pleaded reliance on the prior publication in the United Kingdom of the Page patents and of the “Kiddicraft” 2 x 4 and 2 x 2 bricks. In relation to the Duplo 2 x 4 and 2 x 2 bricks Lego also pleaded additional reliance on the prior publication in the United Kingdom of Registered designs Nos.895905 and 912216 of the Lego 2 x 4 and 2 x 2 bricks. 207. The novelty issue seems to have been only cursorily argued before the trial judge who heard no evidence addressed expressly to the issue. He dealt with the matter in his judgment on the basis that the burden was on Lego to establish lack of novelty and that the issue was one to be decided by the eye as a matter of fact. He said:
208. It is significant that the judge does not mention any argument in support of the pleading bearing on the sequence of publication of the Lego and Duplo designs or on associated designs. No reliance was placed by Lego, on the appeal, on that part of the pleading. Indeed, to my surprise, the whole issue was very lightly argued and efforts on my part to draw out leading counsel on this issue produced little more than the acknowledgment from Mr. Jacob and Mr. Aldous that Lego had contended, and Tyco denied, that the Lego design was essentially the Page design with variations which were insufficient to give the Lego design novelty. 209. The novelty or otherwise of the Lego and Duplo designs has to be determined under section 1(2) of the Registered Designs Act 1949 which provides as follows:-
210. To determine the issue in the circumstances of the present case it is not necessary to explore the meaning of the words “new or original” which are not defined in the Act. The question amounts to whether for the purposes of section 1(2) Lego's designs were the same as the Page designs or differed from those designs only in immaterial details or in features which are variants commonly used in the trade. 211. The onus being upon Lego to establish that the answer to the question should be in the affirmative the only evidence adduced before the trial judge was to the effect that the Registrar of Designs had actually registered design Nos. 895905 and 912216 of Lego's standard 2 x 4 and 2 x 2 bricks after accepting the submissions of Lego's counsel, in the case of design no. 895905, that the design had novelty. It seems to me that the fact of such registration is at least prima facie evidence of novelty. Moreover the letter dated the 22nd June 1960 is evidence that Lego had argued successfully by their counsel that their design was novel. 212. There was no evidence to explain why Lego had now changed their view on this issue on the merits as distinct from mere forensic expediency. 213. Furthermore, in my judgment, in the present situation where the trial judge had before him evidence that the Registrar’s Hearing Officer, who is versed in these matters, had been persuaded to reject the Examining Officer's contention that the Lego design lacked novelty, the judge was not entitled to substitute his own views for those of the Hearing Officer in the absence of any evidence from any witness in the trade called by Lego to support such a course. I accept that the test of novelty is ultimately a visual one but the eye must be an instructed one. In this respect it seems to me that the following observation of Lord Moulton in Phillips v. Harbro Rubber Company(4) at pages 230-231 are very much in point:-
214. Accordingly, if I had not interpreted paragraph 8(2) of the Seventh Schedule to the Copyright Act 1956 in the manner indicated above but had held that “capable of registration” meant full entitlement to registration, I would nevertheless have held that the designs constituted by the pre 1973 Lego drawings were capable of registration for the purposes of paragraph 8(2) because they were designs within section 1(3) of the Registered Designs Act 1949 and satisfied the novelty requirements of section 1(2) of that Act. I add that it comes as no surprise to me that when Lego relied on the novelty issue, albeit without reference to the Page design, before Whitford J. in the Interlego A/G Case he gave them short shrift. 215. The effect of this judgment on issues (1) (copyright in the moulds) and (2) (registrability of the designs constituted by the pre 1973 drawings) makes it unnecessary to deal with Mr. Jacob's helpful argument on issue (3) (estoppel in various forms). I will not therefore deal with that issue. It raises difficult and important questions, particularly in relation to what Mr. Jacob called public estoppel. I felt great difficulty in relation to his arguments based on various established forms of estoppel and election. As regards public estoppel. I consider that if any new law is to be made by judicial decision it should not be made at this level of jurisdiction where it has been possible to determine the rights of the parties by deciding other issues. 216. On issue (4) (additional damages under section 17(3) of the Copyright Act 1956) which now applies only to the post 1972 drawings, I find myself in entire agreement with the judgment of Fuad J.A. 217. Accordingly I would allow this appeal and vary the order made below to the extent that it relates to Lego's moulds and pre 1973 drawings. I would also delete all reference to additional damages from the order. The post 1972 works 218. Having concluded that all Lego’s moulds and pre 1973 drawings have no copyright, the question remains whether Lego have any copyright in any of their post 1972 drawings which they can enforce against Tyco. Mr. Jacob submitted that Tyco had no such right. He relied on the following grounds in relation to all or some of the relevant drawings:
219. As to issue (1) (Originality), it is well settled that to be an “original” artistic work for the purposes of section 3 (2) of the Copyright Act 1956 the work is not required to be the expression of original or inventive thought but it must he the product of the author’s independent work labour and judgment. The precise measure of work, labour and judgment required to establish copyright cannot be defined. It is always a question of fact and degree. An idea is not the subject of copyright but the skill and labour required to give an idea some particular material form does receive the protection of copyright. 220. These basic principles, which the trial judge clearly bore in mind were encapsulated by Whitford J. in the following passages cited by the trial judge from L.B. (Plastics) Limited v. Swish Products Limited(5) at pp.567:-
and at p.568:-
221. An important matter, in relation to the ascertainment of the scope of copyright in an industrial drawing as well as the issue of infringement, is that the written matter on the drawing is not to be disregarded. It is part of the drawing which is not to be excluded from it for copyright purposes. An attempt to achieve such a result failed in the Court of Appeal in British Leyland Motor Corporation v. Armstrong Patents Co. Ltd.(6) where at p.606 Oliver L.J. observed:-
222. As to the identification of the work which comes within the scope of the copyright of an industrial drawing which represents a three dimensional article and is an artistic work (irrespective of artistic quality) for the purposes of section 3(1)(a) of the Copyright Act 1956, it is now settled by the House of Lords that no distinction is to be drawn between the work constituted by the “penmanship” of the draughtsman on the one hand and, on the other hands, the skill and preliminary work of the engineer or functional designer which has furnished the information necessary to devise the form which gives the three dimensional article, which the drawing represents, its operational efficiency. Both categories of work are recognised, if they combine in sufficient measure, to constitute originality, as giving rise to one indivisible copyright. 223. Attempts to segregate these categories of work and exclude the second category from copyright in order to escape three dimensional infringement failed in the House of Lords in the L.B. (Plastics) Case where Lord Hailsham observed at p.631:-
224. A similar attempt failed in the House of Lords in British Leyland Motor Corporation Limited v. Armstrong Patents Co. Ltd.(7) although it attracted a powerful dissenting judgment from Lord Griffith. In that case at p.621 Lord Bridge had this to say:-
225. Lord Templeman, who delivered the other leading majority judgment, observed at p.638:-
He then cited the passage at page 631 which I have cited above. 226. Both below and on the appeal Mr. Jacob relied on the history of the Lego system which has been one of successive revisions of drawings since the initial adoption of the Page brick. He contended, in relation to the 1976 drawings, that they were essentially copies of the 1968 drawings. His fundamental argument was that if Lego were to succeed they had to identify what was “new” in the 1976 drawings as giving them their originality and then show that Tyco had taken a substantial part of what had been so identified. Lego should, he contended, identify the “changes” embodied in the 1976 drawings and show that Tyco had taken them. 227. Mr. Jacob relied on authorities relating to literary works and compilations where work reproducing and copying earlier work of others without alteration was disregarded when identifying what, if any, of the originality of a literary work or compilation had been taken by an alleged infringer of copyright. He cited, amongst other authorities, Macmillan v. Cooper(8); William Hill v. Ladbroke(9) and Warwick Film Productions v. Eisinger(10). 228. As regards industrial drawings, he accepted that where there are preliminary or preparatory drawings attracting copyright but resulting in a final drawing, the final drawing is protected by copyright although derived from previous drawings. On this footing he contended that his argument was not inconsistent with the observations of Whitford J. in the L.B. Plastics Case when considering the question as to whether there can be copyright in a copy and concluding that it was a question of degree. 229. In that case the drawings made prior to one of the drawings alleged to have been the subject of infringement of copyright were not out of copyright. A question also arose whether there could be copyright in some of plaintiff’s drawings if they were copies of prior three dimensional models which were not entitled to the protection of copyright. Whitford J. dealt with this question in the following passage at page 568 of his judgment which was cited by the trial judge:-
230. The trial judge, in rejecting Mr. Jacob's argument came to the following conclusion on the relevant law:-
231. In my judgment this conclusion was right. I accept Mr. Aldous' contention that the cases on literary work and compilations are distinguishable because the reproduction, without alteration, of literary work clearly involves no skill, labour or judgment whereas the reproduction of an industrial drawing by other than mechanical means may well do so, depending on the degree of skill, labour, or judgment required. The approach of the trial judge is consistent with that adopted by Whitford J. on the question of derivative industrial drawings with which I respectfully agree. 232. Thus in the L.B. Plastics case Whitford J. made it clear that in his view a derivative drawing was entitled to claim to be a separate original artistic work attracting copyright. He observed at page 569:-
233. The same judge expressed the same view in Hoover P.L.C. v. George Hulme (Stockport) Limited11 (which was not cited) at p.571 when dealing with the question of originality, which was not an issue an issue on which his decision was overruled by the Court of Appeal in the British Leyland Case. He said:-
234. In Standon Engineering Ltd. v. Spalding and Sons Limited12 the passages in the judgment of Falconer J. dealing with the originality of the original drawing are not reported. Mr. Aldous relied on passages from the transcript of the judgment in that case. At p.13H the judge appears to be accepting, albeit on concession by counsel for the defendants, the views of Whitford J. expressed in the L.B. (Plastics) Case on the originality of derivative drawings for copyright purposes. The judge is recorded as saying:-
235. Although the views of Falconer J. were expressed on a question which was the subject of concession they carry weight as the views of the other patent judge concurring with his brother Whitford J. 236. I mention that the question of the originality or otherwise of derivative drawings arose but was not decided on an interlocutory motion before Megarry J. in British Northrop Limited v. Texteam Blackburn Limited13. In that case Megarry J. held at p.68. and Mr. Aldous accepts, that a drawing which is simply traced from another drawing is not an original artistic work. This was also accepted by Costello J. in the Irish case of Allibert S.A. v. O’Connor14. He expressed at p.621 the following view on the English authorities which had been cited to him, which included the decision of Whitford J. in the L.B. Plastics Case:-
237. In my judgment the views expressed by Whitford J. on the originality issue in relation to derivative industrial drawings in the L.B. Plastics Case are clearly right and the trial judge was correct in following them. Citing Warwick Film Productions Ltd. v. Eisinger(10), the editors of Copinger (12th edition) express the view, at paragraph 116 that problems may arise over infringement where there have been re-drawings as the courts may disregard the parts which have been taken without alteration from the pre-existing works. Laddie Prescott and Vitoria on the Modern Law of Copyright also express similar views at the end of paragraph 3.25 regarding infringement but those responsible for both text books appear to accept Whitford J.’s decision on the originality issue in the L.B. Plastics case. 238. Mr. Jacob argued that the facts of the present case are outside the ambit of Whitford J.'s decision in that case if (as I have held) the pre 1973 drawings are out of copyright. In my judgment that is not a valid argument because, as Whitford J. rightly held at p.569 in the L.B. Plastics Case (cited above), a derivative drawing can claim to be a separate original artistic work. It follows, in my judgment, that unless a derivative drawing has been mechanically copied, or is a simple tracing, or its production does not, as Lord Hodson indicated in Ladbroke (Football) Ltd. v. William Hill (Football) Ltd.(9) at p.287, require the employment of “more than negligible skill”, copyright will protect the whole drawing as an original artistic work. 239. The proposition that for the purpose of determining whether or not a work has originality for copyright purposes it is not permissible to dissect the work and exclude, as Mr. Jacob appeared to seek to do in the present case, those parts which he contended to lock originality by themselves, was rejected by the House of Lords in the Ladbroke Case which was concerned with a football pool betting coupon which was a literary work for copyright purposes. I agree with the trial judge that his decision on the originality issue is supported in principle by the dicta of Lord Reid at page 277 and Lord Pearce at p.291 in that case which was cited by the trial judge. Lord Reid said in the passage cited by the trial judge:-
He went on to say:-
The dictum of Lord Pearce was to the like effect. 240. Mr. Jacob argued that if the law is to be held to permit the owner of the copyright in an industrial drawing to obtain the protection of copyright in each of a succession of amended drawings of the same basic article, the effect would be to enable him to create a perpetual copyright. He added in colourful terms that such a result would make patents look “namby pamby”. 241. It may well he that it is anomalous to extend the protection of copyright to any artistic work which constitutes a design which is intended to be multiplied industrially, whether the design has eye appeal or not. However we have to take the law as we find it. For my part I do not consider that any additional anomaly arises by reason of the protection of derivative industrial drawings by copyright. If a succession of drawings, each derived from its predecessors, remain in copyright none of them may be copied without infringing the owner’s copyright. However, as Mr. Aldous emphasised, if one or more of the drawings have lost their copyright they may be copied with impunity. All that the law requires is that the drawings which still have copyright may not be copied without infringement of copyright. 242. Accordincly, if I am right in concluding in the present case that the pre 1973 drawings have no coryright, they may be copied without infringement. I apprehend that it is for this reason that Lego has fought so hard to establish and enforce copyright in all the drawings in this case going right back to the Page drawings. However if Tyco has copied any of the post 1972 drawings which have copyright protection it seems to me to be right in principle that they should be required to accept the consequences of taking the work of another. 243. Having made his findings on the law concerning originality with particular reference to derivative drawings, the trial judge did not deal specifically in his judgment with each of the numerous Lego drawings when determining whether as a matter of fact the drawings had originality for copyright purposes. He referred to the qualifications of the draughtsmen, described Mr. Pucek as the most skilled and indicated that Lego's Vice-President, Mr. Moller, had given him a detailed explanation of the drawings and of the labour involved. He described the drawings as generally showing the element from a top view and cross sectional views and mentioned that during the preparation of a drawing a draughtsman would normally have had a sample of a Lego element and or an earlier drawing in front of him for reference. 244. Having dealt with the first and second gerteration drawings, the judge mentioned that he had examined the originals of all the drawings which showed the details of the various improvements and amendments which had been made to the successive generations of brick together with the Duplo and other individual elements. He then said this:-
245. On behalf of Tyco Mr. Jacob criticised this general approach. He pointed out rightly, that when infringement is considered it must be related to a specific drawing. He contended that the 1976 drawings were essentially copies of the 1968 drawings with minor alterations. Mr. Jacob relied on a passage in the cross-examination of Mr. Pucek who had said that he had used the 1968 drawing of the 2 x 4 brick as an aid to making the 1976 drawing of the same element. When it was put to him that really the 1976 drawing was a copy of the 1968 drawing he replied “yes”. 246. Mr. Pucek had also said, under cross-examinations that “In principle” the same thing happened when the 1976 drawing of the 2 x 2 element was made. It had been put to him that the 1976 drawing was basically a copy of the 1968 drawing and he had replied:-
Mr. Jacob pointed out that an attempt to modify this evidence failed when one of Lego's leading counsel, Mr. Rogers, asked Mr. Pucek under re-examination if he regarded the 1976 drawing of the 2 x 2 element as “a copy in the sense of a tracing” of the 1968 drawing and received the reply:-
247. Relying on the reference to tracing by Megarry J., in the British Northrop Case at p. 68, as not giving rise to originality in a copy of a drawings, Mr. Jacob contended, on the strength of Mr. Pucek's admissions, that the judge had failed to consider the evidence regarding the 1976 drawings properly. In the light of Mr. Pucek’s evidence, Mr. Jacob contended that the judge seemed to have considered that time, skill and patience applied in making a good tracing copy was enough to create an original work when he had observed, after reference to that evidence, that nevertheless -
248. These arguments have to be considered against the body of the evidence collated in the schedule which Lego's lawyer s prepared and which the trial judge appears to have accepted as a reliable summary of the details of the work that was carried out in the preparation of the relevant drawings and the appropriate time taken to produce each drawing. On the appeal no challenge has been made to the acceptance by the judge of the evidence of Mr. Moller, Mr. Pucek and the relevant Lego draughting personnel on these factual details. If their evidence establishes that the production of the relevant post 1972 drawings in fact required more than negligible labour skill and judgment, as the judge clearly concluded, then his decision is sustainable notwithstanding the evidence of Mr. Pucek agreeing that “In principle” the production of the 1976 drawing of the 2 x 2 element was “a copy in the sense of a tracing”, whatever that may be taken to mean. 249. Having held that the pre 1973 drawings have no copyright I confine the examination of the evidence summarised in Lego's Schedule of Originality to that concerning only the relevant post 1972 drawings which are considered individually below. I refer to the elements and drawings in the same sequence as appears in Table ‘A’ in paragraph 3 of the Re-Re-Amended Statement of Claim. Lego drawings (a) 2 x 4 brick (L6): Drawing No. 300100: 27.4.76 250. This drawing portrays the standard 2 x 4 brick in the thick walled version to which Lego reverted in place of the thin walled version (L5) which had been adopted in 1972 in place of the 1968 thick walled version (L4) of the "third generation" brick which was portrayed by Drawing No. 300100 dated 4.3.68. Broadly speaking Lego can be said to have gone back, at this stage, to the 1968 thick walled brick with modifications. It seems that the 1976 drawing would have been used for the making of subsequent moulds but the moulds made from the 1968 drawing would have continued in use. 251. The evidence of Mr. Moller was that the 1976 drawing introduced the following changes compared to the 1968 drawing:-
252. The most important of the changes to Lego was the introduction of the sharp edge referred to at (1) above. It appears to be trivial to the layman but it was of considerable importance to Lego because of its significance in relation to “clutch power”. The 1968 drawing had depicted a 0.4mm. rounded edge or radius on the outer diameter of the inner fixing tubes. This was confined in the 1976 drawing to the inner diameter of the tubes. The technical significance of this change was explained by Mr. Moller in his evidence in chief in the following terms:-
Under cross-examination Mr. Moller indicated that Lego would have chosen to make their brick with a radius on the inner tubes because sharp edges and sharp corners are not very good for small children. 253. In his evidence in chief Mr. Moller explained the technical significance, with the aid of another drawing, of the increase of the knob radius from 0.2mm. to 0.3mm., referred to at (8) above. It had to do with the importance of radius and tube co-operation and the achievement of the critical area of contact which was found to be 1.1mm. 254. Mr. Moller admitted under cross-examination, as is the case. that apart from the introduction of the sharp edge on the outer diameter of the inner fixing tubes the differences between the 1976 and 1968 drawings were very small. However when pressed in cross-examination he would not have it that in relation to the functional matrix of the Lego system small differences in tolerance were unimportant. He insisted that small deviations could have big impacts on the function of the element. 255. The 1976 drawing, which was subsequently re-drawn and corrected, was made by Mr. Pucek. He was not a mere draughtsman. At the time he was the head of the Element Construction Department of Lego. His evidence was that the 1976 drawing took him something like half a day. He said that at the time he probably made use of the 1968 drawing by glueing it on to his drawing table and then making his drawing directly in ink, making use of the dimensions shown on the 1968 drawing so that all he had to do was put in the tolerances. 256. He agreed under cross-examination that his drawing was a copy of the 1968 drawing with some modifications. He accepted that so far as the actual drawing was concerned it was easier to make a sharp edge than a rounded edge. He agreed that in general terms, apart from the sharp edge, the differences between the 1968 and 1976 drawings were only a tiny part of the work that went into his 1976 drawings but he said that as far as the element was concerned the changes were important. He added that the preparatory work done until the decision was reached was heavy. He had not, he said under cross-examination, had the authority to make the decision to introduce the sharp edge, but he had taken part in the discussions leading to the decision because he did not want to make a drawing with which he was not completely in agreement. 257. Under re-examination Mr. Pucek indicated that to him there was nothing complicated about the 1976 drawing but his evidence in chief was that the only reason why the drawing would have been made by him and not one of his subordinate Lego draughting personnel would have been because it was an urgent matter. 258. It seems to me that the evidence outlined above fully entitled the trial judge to conclude that the 1976 drawing of the 2 x 4 brick had originality as an artistic work because sufficient skill labour and judgment had been applied by Mr. Pucek and those who made the decision to introduce the sharp edge to the outer diameter of the inner fixing tubes and the other modifications of the tolerances and dimensions of the 1968 drawing depicted in the 1976 drawing. The degree of skill labour and judgment was, in my judgment, not only more than negligible but substantial. There was no question of slavish copying here but to the basic skilled “penmanship” of Mr. Pucek, there was added the functional or engineering design skill and experience of Mr. Pucek and those of his colleagues who made the decision to adopt the sharp edge and also the altered tolerances for the 1976 drawing to improve the functional capacity of the element. In my judgment copyright protection extends to the whole of the 1976 drawing and not merely to those parts of it which portrayed changes in relation to the 1968 drawing. (b) 1 x 2 brick (L12): Drawing No. 300400: 29.6.76 259. This drawing portrayed the reversion, as in the case of the 1976 2 x 4 brick, to the modified, form of the 1968 thick walled 1 x 2 brick (L10). Mr. Moller's evidence was that the diameter of the inner pin was reduced from 3.1 to 3.08mm.. The function of the pin is to provide positioning and not clutch power. 260. The drawing was a new drawing made to a different scale from that of the 1968 and 1972 drawings of the same brick which would have been provided to Hanne Fabrin a technical assistant, who made the 1976 drawing on the instructions of Mr. Pucek. Mr. Pucek’s evidence was that he discussed the proposed content of the drawing with Hanne Fabrin. He said he thought it would have taken her something like two days to make the drawing because she would have to make a draft version and she was a bit slower than the other draughting personnel. 261. Hanne Fabrin herself said that the drawing was a relatively simple one. Her evidence was that, if not interrupted, it would have taken her several hours to make it and, in addition, she would have spent some time in preparation including taking instructions from and discussing the drawing with Mr. Pucek. 262. This evidence clearly supports the judge's conclusion that the 1976 drawing of the 1 x 2 brick had sufficient originality for copyright protection. It was regarded by the comparatively inexperienced Hanne Fabrin as a relatively simple drawing. However she was trained in technical drawing and this drawing was the result of her draughting expertise combined with the highly skilled advice of Mr. Pucek. Furthermore it incorporated a modification to the underneath pin’s dimension designed to improve its function. These are all matters indicating that more than negligible skill, labour and judgment were applied in making the drawing. (c) 1 x 3 brick (L30): Drawing No. 362200: 10.11.76 263. This was another drawing made by Mr. Pucek whose evidence was that when he made it he would have had the previous drawings of the thin walled version of the 1 x 3 brick in front of him. The previous drawing of the thin walled version was dated the 15th November 1973. There was no evidence of any 1968 drawing of this brick. 264. Mr. Moller explained in his evidence that the drawing incorporated a reduction from 3.12mm to 3.08mm. in the diameter of the underneath pins, which were intended only for positioning. It had been altered to show a 1o tapering of the underneath pin above the 2mm. mark from the bottom of the pins for moulding purposes. Mr. Pucek said this drawing would have taken him something like four hours to complete. 265. This drawing took a relatively short time to be made by a highly skilled draughtsman but it clearly incorporated more than negligible skill, labour and judgment in the form of his penmanship and also the design skills involved in deciding on the amendment to the dimensions of the underneath pins. (d) 1 x 4 brick (L15): Drawing No. 301000: 30.6.76 266. This was an element in respect of which there had been a 1968 drawing as well as the thin walled version. Mr. Moller is evidence was that when reverting to the thick walled version the 1976 drawing showed the diameter of the underneath pins as reduced to 3.08mm.. The pins were again only for positioning and the drawing showed a 1o tapering on the pins above the 2.1mm. mark from the bottom of the pins. 267. Mr. Pucek was in charge of the preparation of this drawing which was actually drawn by Hanne Fabrin. Mr. Pucek’s evidence was that Hanne Fabrin would have spent something like two days completing the drawing and that during that time he would have spent something like three hours discussing the details with her. 268. Hanne Fabrin, however, deposed that the drawing would have taken her approximately a day to complete. She confirmed that she would have been given oral instructions by Mr. Pucek and that she would probably have been given copies of the preceding drawings with amendments. Comparison of this drawing with the 1968, 1971 and 1972 drawings shows that the 1976 drawing was a new drawing and not a copy of its predecessors. Hanne Fabrin’s evidence was that she would have chosen the views to be shown in the 1976 drawing but she would probably have discussed this with Mr. Pucek. She deposed that in particular it was her decision to enlarge the middle cross-sectional view and to dispense with the second cross-sectional view. 269. The evidence relating to this drawing is generally similar to that relating to the drawing of the 1 x 2 brick and clearly confirms that the 1 x 4 drawing had originality. (e) 1 knob brick (L18): Drawing No. 300500: 3.8.76 270. This is another example of a re-drawing of an element with modifications. Again the drawing was made by Hanne Fabrin acting on the instructions and advice of Mr. Pucek. 271. Mr. Moller’s evidence was that the 1976 drawing portrayed the dimension of the inside width of the brick to be increased to 4.84mm. from 4.83mm. shown in Ellen Jensen's 1968 drawing of the 1968 thick walled version (L16). Mr. Pucek said the 1976 drawings showed modifications in the tolerances. He said he would have spent something like an hour discussing the 1976 drawing with Hanne Fabrin because in principle the only thing she would have had to change would be the outline of the drawings and then she would have had to add similar measurements to them. 272. Hanne Fabrin deposed that she estimated it would have taken her one to two hours to make the 1976 drawing. Her evidence was that she did not have the actual element before her when making the drawing but she would probably have had the previous drawings, including the 1968 drawing before her. She would have done some planning before she made the drawing which would have been executed in the same manner as the other drawings deposed to by her. She also said that the method of showing dimensions on this drawing was different from the previous drawings and the format adopted would have been in accordance with the standard practice of Lego at that time. 273. The evidence in the case of this drawing falls into the same pattern as for the drawings of the 1 x 2 and 1 x 4 bricks and clearly establishes originality. (f) 2 x 2 brick (L20): Drawing No. 300300: 5.5.76 274. Again, this drawing was made by Hanne Fabrin in consultation with Mr. Pucek. Mr. Moller's evidence referred to the modification made to the inner fixing tube. As in the case of the standard 2 x 4 brick a sharp edge was introduced on the outer diameter of the tube in order to improve clutch power. 275. Mr. Pucek said he thought the total time taken by him in giving Hanne Fabrin instructions for this drawing would have been around three hours. This is the drawing of which Mr. Pucek said under cross-examination that from a technical point of view the scale had no importance and so it was “basically the same” as the 1968 drawing of the 2 x 2 brick. Under re-examination he said that he regarded the 1976 drawing as “in principle” a copy in the sense of a tracing. However he added that it would have been quite an effort for Hanne Fabrin to make the drawing since she was relatively new. 276. Hanne Fabrinis evidence regarding this drawing followed the same pattern as before in relation to her other drawings. She deposed that as far as she could recall she would have had the previous 1973 and 1968 drawings before her when she made the 1976 drawing. It would have been her decision to make her drawing on smaller sized paper and to change the selection of views. She added that this decision would probably have been made in consultation with Mr. Pucek. She deposed that the dimensions would have been given to her and would have been inserted by her following the standard layout of Lego at the time. Her evidence was that the drawing would have taken her about half a day to make if it were made without interruptions. 277. It is clear from inspection of all the drawings of this element that the 1976 drawing was not in fact a slavish copy of any of the previous drawings. It was a re-drawing and the layout and scale of the 1976 drawing is manifestly different from that of the 1968 drawings. Moreover the 1976 drawing incorporates the important modification of the sharp edge to the outer diameter of the inner fixing tube. The functional importance of this modification in the Lego modular inter-locking system is a factor which, in my judgment, distinguishes it from a minor literary emendation to a literary work. 278. I have already considered Mr. Pucek and Mr. Moller’s evidence about the sharp edge when dealing with the originality of the 1976 drawing of the 2 x 4 brick. In my judgment, notwithstanding the semantic implications of Mr. Pucek's reference to copying in principle in relation to this drawing, there was ample other evidence to justify the judge’s conclusion that the 1976 drawing of tile 2 x 2 brick had originality. It seems to me that it is in the same category, in this respect, as the 2 x 4 brick. (g) 2 x 2 x 2 windshield (L21) (also called roof tile): Drawing No. 367800: 10.7.75 279. The judge held that the corresponding windshield (T16) made and sold by Tyco did not infringe Lego's 1976 drawing. Therefore no issue arises on the appeal concerning originality or infringement in relation to T16. I will deal later with the issue arising out of the injunction granted by the judge in relation to Tyco's original windshield element (Exhibit T16a) which Tyco contends was the subject of its letter before the trial indicating that Tyco had decided not to make T16a. (h) 3 x 4 roof tile (L23): Drawing No. 329700: 13.1.76 280. This drawing was again the work of Hanne Fabrin under the control of the very much more experienced Mr. Pucek. There appears to have been no drawing of the element prior to the drawing of the thin walled version dated 4.3.70. Mr. Moller's evidence regarding the modifications of the thin walled version shown in the 1976 drawing, as amended, referred to the thick walls, the removal of the slots from the inner fixing tubes and the introduction of sharp edges on the outer diameter of the tubes which retained their radius or rounded edges on the inner diameter. This is yet another example of an element which was modified in 1976 to include the sharp edge on the outer diameter of its inner fixing tubes. 281. Mr. Pucek said that he could not remember exactly how long he took instructing Hanne Fabrin about this drawing. He believed it was the first drawing he allowed her to make by herself and so this would have increased the amount of time he spent discussing it with her. 282. Hanne Fabrin deposed that she would have made the drawing in the same manner as she had described in relation to her other drawings. It appeared to her that her instructions for making the drawing were mainly to increase the thickness of the walls and to eliminate the strengthening ribs and the slots on the fixing tubes. She referred to a number of amendments to the drawing, all but two of which she deposed to as having been made by her. One of the amendments appears to have been the introduction of the sharp edge to the outer diameter of the inner fixing tubes. Hanne Fabrin deposed that she would have spent at least one and a half days in making the 1976 drawing and an aggregate period of another half day making such of the amendments to the drawing as were made by her. 283. In the light of the above evidence there can, in my judgment, be no doubt but that the 1976 drawing of the 3 x 4 roof tile, including its amendments, had originality for purposes of copyright. It is another example of the product of basic draughting penmanship combined with the skill of the designer which is given formal expression in the drawing. (i) Hub with knobs (L31): Drawing No. 1-5-05: 2.9.63 284. There appears to be no post 1972 drawing of this element. Moreover the judge held that there was no evidence of infringement by Tyco in relation to any Lego drawing of the hub with knobs. This finding was not challenged an appeal. The issue of originality does not therefore arise on appeal in relation to this element. Duplo Drawings (j) 2 x 4 brick (LD3): Drawing No. 301100: 19.11.73 and 24.3.77
(k) 2 x 2 brick (LD5): Drawing No. 343700: 11.12.73 and 20.12.76
(l) 6 x 12 plate (LD9): Drawing No. 419600: 23.8.79 285. There is no evidence of the existence of a drawing of the 6 x 12 plate before 1973. Mr. Moller is evidence was that previously Lego had made a flat vacuum moulded plate. Accordingly no question of re-drawing arises here. 286. This drawing was made by Britta Arnold. She had obtained the qualifications of technical assistant and mechanical engineer at the Soenderborg Technical School. When she made the drawing she was employed as a constructor in the Element Construction Department of Lego. Her instructions to make the drawing came from the then head of her department, Mr. Kaj Faurby. 287. Britta Arnold deposed that when she made the drawing she had a sample of a Duplo 2 x 4 brick in front of her but she had no drawings before her for reference. She did not recall any discussions with any of her colleagues when she made the drawings. She did not have to make any calculations of the dimensions of the plate because those dimensions were based on the standard Duplo brick's dimensions. She deposed that when making the drawing her concern was to depict as clearly as possible an element the shape and dimensions of which were based solely on the Lego and Duplo standard brick shape and dimensions and which would enable the plate to fit with other bricks within the Lego system: 288. Britta Arnold's evidence was that she would have spent approximately half a working day in mentally planning and preparing the drawing. She deposed that the making of the actual drawing would have taken her approximately eight hours. 289. There can be no doubt that this drawing had originality. 290. I mention, because it is material to the issue of infringement, that Britta Arnold’s drawing resulted in a problem with the finished article. The inner fixing tubes were too short for satisfactory co-operation with the wheels of the Duplo trailer. Moller's evidence was that this problem was overcome satisfactorily by increasing the height of the inner fixing tubes to a safe distance of 0.1mm. from the base line of the element. This change is shown in the amendment dated 24.3.81 in the amendment box of the drawing. (m) Trailer wheel (LD7): Drawing No. 366700: 11.11.74 291. This drawing was made by Mr. Pucek from a module produced by the Duplo department of Lego. The element was new. It was connected with the development of the trailer. Mr. Pucek said that he and his colleagues had lots of discussions as to how the two elements would fit together. His evidence was that whilst the actual drawing would have taken him only something like five or six hours, the development of the wheel in relation to the trailer would have taken something like a month. 292. This drawing clearly had originality and during the hearing of the appeal Mr. Jacob made it clear that originality was not challenged in this instance. 293. Having conducted a close scrutiny of the relevant post 1972 drawing and of the relevant evidence in the transcript which is summarised above I am not persuaded by Mr. Jacob’s arguments that the judge failed to give proper consideration to the evidence concerning the 1976 drawing of the standard 2 x 4 Lego brick or concerning any other post 1972 drawing. On the contrary, it seems to me that the judge’s findings, albeit expressed in general terms were fully justified by the evidence before him which he must have grasped and considered carefully before arriving at his decision. 294. Bearing in mind the number of drawings he had to consider and the number of issues he had to determine in a long and careful judgment it is understandable that he decided not to deal seriatim with the originality of every drawing. Be that as it may, I conclude for the purposes of this appeal that he was right to hold that all the relevant post 1972 drawings had originality for purposes of copyright. 295. As to issue (2) (Infringement), the issue of infringement in relation to any Lego drawing which is an original artistic work is ultimately a question of fact governed by sections 3(5)(a) and 49(1) of the Copyright Act 1956 read in conjunction with the definition of “reproduction” in section 48(1) as including, in the case of an artistic work, a version of that work produced by converting it into three dimensional form. Shortly stated, the issue is whether Tyco has indirectly, by copying a particular Lego element, reproduced the Lego drawing of that element or a substantial part of that drawing making the relevant allegedly infringing Tyco element. In this field of the law this process is sometimes called “reverse engineering”. 296. In the L.B. (Plastics) Case Whitford, whose decision was restored by the House of Lords, described the issue of infringement by indirect three dimensional copying which was before him in the following terms at p. 579:-
297. In that case, in the House of Lords, Lord Wilberforce observed at p.619:-
298. At page 625 in the same case Lord Hailsham cited the following dictum of Lord Wright in King Features Syndicate Inc. v. O. & M. Kleeman Ltd(3) at p.436 to the effect that where there is substantial similarity it is prima facie evidence of copying:-
299. A further authority which Whitford J. cited at p.571 in the L.B. (Plastics) Case and which I too have found helpful is the following dictum of Willmer L.J. in Francis, Day & Hunter Ltd. v. Bron(15) at p.614:-
300. Whether or not the owner of copyright is successful in establishing infringement of his copyright by the substantial reproduction of his work depends not such much on the quantity as on the quality of what is taken. Infringement involves the taking of a substantial amount of what gives individuality to the work of the copyright owner. These principles were clearly enunciated in Ladbroke (Football) Ltd. v. William Hill (Football) Ltd.(9) Lord Reid observed in that case at p.276:-
The same point was made by Lord Pearce when considering copying in the following passage at p.293:-
301. The application of these principles in relation to the infringement of the copyright in a literary work (a football pool betting coupon), which was a compilation, resulted in the common place matter in the coupon which would not attract copyright, except by reason of its collocation, being treated as unprotected by copyright because it had no originality by itself and was not therefore a substantial part of the copyright. As I have already indicated above when dealing with originality, Mr. Jacob sought to pray in aid these principles to support his contention that, when considering whether the Tyco standard 2 x 4 brick [T14] infringed the copyright of the Lego 1976 drawing, the only individuality in that drawing to be regarded as protected by copyright, and therefore susceptible to infringement comprised whatever was new and represented a change in relation to the earlier 1968 drawing which was out of copyright. 302. In my judgment this argument, involving the deduction from the 1976 drawing of all that was in the 1968 drawing in order to arrive at the residual matter identifiable as the only individuality of the 1976 drawing protected by copyright, is unsound in the present context involving industrial drawings because all the Lego features and matter appearing in the 1976 drawing (including what was previously portrayed in the 1968 drawing) constitute the individuality of the drawing as a separate artistic work which is entitled as a whole to the protection of copyright . 303. In arriving at this conclusion I have respectfully followed the views of Writford J. expressed at page 587 in the L.B. (Plastics) Case when considering the same question of principle. He said:-
304. However the necessity for the establishment of a causal connection of the allegedly infringing article with the copyright work which it substantially reproduces assumes special importance in the present case where Lego has sought to prove infringement in relation to numerous drawings, groups of which are in some instances substantially similar members of a line of drawings of a particular Lego or Duplo element. The evidential point thus arising was recognised by Whitford J. in the L.B, (Plastics) Case but he found the evidence before him was sufficiently strong to make the point of no materiality. He dealt with the point at p.588 as follows:-
305. The fact that there have been additional modifications to an allegedly infringing work does not take the work out of infringement if it is established that in fact the modifications have been made to a work which was copied from and has substantially reproduced the copyright work. Thus in the L.B. (Plastics) Case Lord Wilberforce, having held that modifications had been made by the respondents to the basic design copied by them from the appellants, observed at p.622:-
306. The trial judge stated the law on infringement correctly when he said at p.54:-
307. I emphasise that by the time the judge came to consider the issue of infringement he had concluded, wrongly in my judgment, that both the pre 1973 and the post 1972 drawings had copyright. He had also concluded, rightly in my judgment, that each of the relevant Lego drawings must be considered as a whole as having its own separate and entire originality. He had rightly rejected the suggestion that every drawing which was a re-drawing, with modifications, of a previous drawing could be dissected so as to leave only originality in the modification after deducting what had been reproduced from the previous drawing. 308. In a passage at pages 25 and 26 of his judgment, which is not challenged by Tyco on appeal, the judge had set out certain matters which appear to have been common ground regarding the motivation of the Tyco defendants in 1983 when Tyco was considering embarking on the production of toy building blocks. He said:
He added:-
309. When dealing with infringement at p.55 of his judgment, the judge began by referring to the following instances of admitted copying by Tyco which are not questioned on appeal, save that Mr. Jacob pointed out that the Lego one knob brick does not have an underneath pin:-
310. The defence pleaded by Tyco on the infringement issue had been one of broad denial. At the trial, as the judge indicated in his judgment, Tyco had denied that they had substantially reproduced Lego's work. They relied on the dissimilarities of their products from those of Lego and contended that their products had their own originality resulting from the necessity of having to adopt their own moulding techniques and tolerances. 311. In a passage where he was considering the evidence of Mr. Martin; Tyco's Vice President of Engineering, the judge adverted to the further contention of Tyco that if they were to be held to have copied at all, then they must have copied only the 1968 and not the 1976 versions of the Lego elements. This argument was clearly related to the issue of design registrability and originality and intended to persuade the court that (1) the originality of the post 1972 drawings was negligible, being identifiable as merely the changes from the 1968 drawings, and that (2) Tyco had not taken a substantial part of that originality. 312. Although the judge had rejected Mr. Jacob's arguments on the design registrability issue and he considered all the relevant pre 1973 drawings to be in copyright, it was necessary for him to decide which Lego drawings, if any, Tyco had copied because Lego cliamed that all. their drawings, except the thin walled versions; had been infringed. Lego contended, and the judge eventually found, that Tyco had copied the post 1972 drawings and thereby indirectly also copied tile pre 1973 drawings which were substantially similar and which had copyright. 313. The judge seems to have reached his final conclusion by progressing from the general to the particular. He began by saying at page 56 of his judgment:-
314. I have experienced difficulty in ascertaining the precise meaning of this passage. Having regard to his earlier correct statement of the law on infringement which he now sought to apply, I can only conclude that when the judge spoke here, as he did later in his judgment, of the obvious similarity between the products of Lego and Tyco as raising a prima facie case that Tyco had “reproduced the whole or a substantial part of the plaintiff's work”, he meant to refer to a prima facie case of the copying of Lego's work generally arising by reason of that obvious similarity. His reference to the causal connection between Lego's drawings and Tyco's articles was general at this stage. I understand him to have been saying, in effect, that Tyco's product was so like that of Lego that there was a prima facie case of copying Lego's work which Tyco was required to rebut. 315. In my judgment it is implicit from the judge’s reference to the obvious similarity between the products of Lego and Tyco and from his rejection of Tyco’s originality argument (seeking to narrow down the originality of derivative drawings by a process of deduction of reproduced matter) that he considered it obvious that Tyco’s products substantially reproduced Lego's relevant drawings which were themselves substantially similar where they fell into groups of successive drawings of the same article. 316. Having held that the evidential burden shifted to Tyco to show that they had not copied Lego’s work the judge dealt with the evidence of Mr. Martin upon which Tyco had relied to show that, apart from taking essential measurements from the Lego product they had made their own product independently by making their own tools, calculating their own tolerances and manufacturing in a different way. 317. For cogent reasons, which appear in his judgment the judge found Mr. Martin to be an evasive, unsatisfactory and unreliable witness. Having rejected the only evidence relied upon by Tyco to rebut the prima facie case of copying arising from the obvious similarity of the products of Tyco and Lego, the judge made the following findings at page 64 of his judgment which were not challenged on this appeal:-
318. This seems to me to be an unequivocal factual finding of a causal connection specifically between the 1976 Lego drawings of the Lego blocks and Tyco’s products. It is based on cogent evidence, including numerous admissions of copying by Mr. Martin, that Tyco had been in a position to analyse the Lego products, had the impression that the 1976 version was the current range in 1983, and had the opportunity and obvious intention to copy. It is also supported by the absence of any reliable evidence to show that the post 1973 drawings were not copied by Tyco. Moreover, as the judge pointed out, Tyco chose not to call. Messrs. Alley, Kempe, Hirtle and Deshmuck who had played an active part in Tyco’s decision to emulate the Lego brick. 319. When the judge had begun his consideration of the infringement issue he had held that there was no evidence of infringement by Tyco of the Lego hub with knobs and that Tyco's revised version of its windshield (T16) (which was different from the Tyco original (T16a)) was not a substantial reproduction of the corresponding Lego drawing. He concluded his judgment on the infringement issue with the following observations:-
320. Again, I understand the reference to the failure to rebut the presumption that a substantial part of Lego’s work had been reproduced to he a reference to failure to rebut tile presumption of copying. The modified parts referred to were the Tyco elements corresponding with the drawings of the Lego windshield and roof tile and the Duplo trailer wheel. 321. Tyco's grounds of appeal on the infringement issue do not challenge the judge’s factual finding of copying set out above. At the heart of the appeal is the originality issue. Thus by the first ground of appeal Tyco contends that the judge -
The second ground of appeal is that the judge failed to hold that the Tyco blocks were most closely similar to the “1968 drawings”. 322. Leading counsel on both sides tended to produce rolled up arguments on the infringement issue, working in the vital question of originality. In my judgment the judge's decision below and the result of this appeal on the infringement issue must follow the decision on the originality issue. 323. The fundamental issue can be simply put by reference to the features of the standard Lego 2 x 4 brick and its Tyco counterpart. The 1968 Lego drawing and brick has a radius on the whole of the diameter of each of its three inner fixing tubes. It has a flow rib running from end to end on the under surface of the brick in line with the fixing tubes, and the point of entry for plastic injection is on one of the sides of the brick. The corners of the brick are sharp: they have no radius. 324. The 1976 drawing of the same brick introduced a number of modifications which I have mentioned above when considering originality. Most of the modifications are very fine alterations to dimensions and tolerances. The alterations of feature or form are the introduction of a sharp edge on the outer diameter of the inner fixing tubes, the removal of the flow rib, the change in the point of entry of plastic from the end walls to one of the knobs and the addition of a small radius of 0.1mm. to the corners of the brick. 325. The Tyco 2 x 4 brick undoubtedly bears a closer resemblance to the 1968 Lego brick and drawing than the 1976 Lego brick and drawing. It has the sharp corners, the flow rib and the side plastic injection entry point of the 1968 Lego drawing. It has a sharp edge on the whole of the diameter of each of its three inner fixing tubes, but only the outer sharp edge is taken from the 1976 Lego element and drawing. If the changes in the 1976 drawing in relation to the 1968 drawing are all that gives the 1976 drawing originality, then all that has been taken by Tyco from that drawing is one sharp edge. 326. The gravamen of Mr. Jacob's argument is that, as Mr. Moller of Lego admitted in evidence, the 2 x 4 Tyco brick (T14) looks more like the 1968 Lego brick and drawing than the 1976 Lego brick and drawing. It has, he argues, taken none of the originality or individuality of the 1976 drawing except one sharp edge. The judge should, Mr. Jacob contends have identified only what was “new” in the 1976 drawing as being what gave it individuality for purposes of copyright infringement. He should then have asked himself if Tyco had taken a substantial part of that individuality when they made the Tyco brick. 327. Mr. Jacob submitted that if the judge had taken this course the answer would have been that although Tyco copied the 1976 Lego brick they had in fact substantially reproduced the 1968 Lego brick and drawing (which has no copyright) and not the negligible originality and individuality of the 1976 brick and drawing. He contended that the judge should have carried out a similar exercise in the case of each Tyco element alleged to have infringed Lego's copyright. He complains that the judge failed to do this, probably because he rejected Mr. Jacob's argument on both registrability and originality and regarded all the relevant Lego drawings as retaining copyright. 328. Mr. Jacob conceded, when suggesting that it was unnecessary for Mr. Rogers, to take us through the history of the Lego drawings, that if, contrary to his submissions, the 1976 Lego drawings as a whole had copyright and if by taking the dimensions they had. Tyco have taken a substantial part of the originality of those drawings, then Tyco had infringed. 329. Mr. Aldous met Mr. Jacob's submissions by contending that the crux of the infringement issue was originality. If Lego succeeded on the originality issue and the 1976 drawing as a whole had originality extending to all its features and dimensions and not only what was “new” in the drawing, then, Mr. Aldous argued, the judge did not have to decide whether Tyco had taken a substantial part of the originality in the drawing because Tyco had taken all of it. He further contended that the fact that Tyco had added a flow rib was neither here nor there. I agree. 330. The Tyco brick (T14) was a substantial reproduction of both the 1968 and the 1976 drawing. It bears a closer resemblance to the 1968 drawing than the 1976 drawing but it is nevertheless a substantial reproduction albeit not an exact reproduction, of the latter. The factual finding of the judge, which is not challenged, that Tyco copied the 1976 drawing when making its 2 x 4 brick (T14) therefore requires a finding of infringement on the part of Tyco. The question could only be decided in the manner contended for by Mr. Jacob if the crucial question of originality had been decided in his favour in this appeal. 331. Save for the exceptions mentioned below I consider that the other relevant Tyco products also substantially reproduced and therefore infringed their corresponding Lego drawings. 332. I accept, as Whitford J. did in the L.B. (Plastics) Case at p.571 line 44, that copying must be tested separately against each drawing relied upon and that it is always for the plaintiff to prove that the whole of any one work, or a substantial part of anyone work has been taken by the defendant. 333. I observe that in the present case the judge did not refer specifically to each Lego drawing alleged to have been infringed by Tyco. His finding of copying by Tyco has not been challenged. I have suggested above the reason why the judge did not in his judgment make a specific finding in relation to each relevant drawing that it had been substantially reproduced by Tyco’s relevant product. I conclude that the obvious similarity between the Tyco product and the Lego drawing sufficed in his mind to establish that there had been substantial reproduction of the corresponding Lego drawing. 334. Accepting also Mr. Jacob’s contention that the court should always identify the originality of an artistic work and that, when it comes to the question of infringement, it is necessary to make a qualitative assessment whether the alleged infringer has taken the individuality of the copyright owner's work, I consider that in the present case, where there were derivative drawings, their individuality is readily identifiable. Once it is accepted that a derivative industrial drawing (the making of which requires more than negligible skill, labour and judgment) has an originality of its own, and that such originality is not confined to what is new in the drawing in relation to what is reproduced from an earlier drawing, it follows that all the Lego features in a line of Lego drawings are identifiable in each drawing as giving each drawing its own individuality. If any of the drawings have lost their copyright the crucial question becomes which drawing has been copied. 335. After comparing the relevant Tyco elements with the post 1972 drawings which they have been found to infringe it seems to me that, with the exceptions mentioned below, the judge was right to recognise an obvious similarity between each Tyco element and its Lego counterpart and the Lego drawing of that counterpart. This is obviously so in the case of the drawings of the standard 2 x 4 and 2 x 2 Lego and Duplo bricks, in the case of the Lego 1 x 2, 1 x 3 and 1 x 4 bricks and the one knob brick. 336. In the case of the 3 x 4 roof tile, Tyco originally made T17A which is obviously a substantial reproduction of the 1976 Lego drawing. As the judge pointed out, when Tyco was advised of the risk of infringement they sought to modify their product by producing T17 which has a thickening of the top part of the roof. Mr. Martin admitted that this was a very small change requiring minimal tooling adjustment and that Tyco kept their original drawings. I agree with Mr. Rogers’ contention that T17 merely added a bit and really changed nothing and that T17 was clearly a substantial reproduction of the 1976 drawing of its Lego counterpart (L23). The drawings mentioned above were all derivative drawings. 337. There were instances where the Lego drawing was not one of a line but was the initial drawing of a Lego product. The 6 x 12 Duplo plate fell into this category. Here there can be no question but that the drawing as a whole had originality. The Tyco plate (T1) had been cut from the Lego plate (LD9) which had been made with underneath fixing tubes that were too short for their functional purposes. The original Tyco plate had the same inadequate length of fixing tubes which were later lengthened to follow Lego's corrected length. 338. There were two differences between the two plates. The Tyco plate had solid studs instead of the hollow studs of the Lego plate which were the subject of a subsisting patent. The other difference was that the Tyco plate did not have the central tubes in the cross patterning at the back of the plate. Comparing the Tyco plate with the 1979 Lego drawing these differences are apparent but it is equally apparent that the Tyco plate is otherwise strikingly similar to and is a substantial reproduction of the Lego drawing. 339. Another Lego drawing which was not a re-drawing was that of' the Duplo trailer wheel made by Mr. Pucek in 1974. Tyco originally made a wheel (T5) which was obviously an infringement of Lego’s drawing. It then made a modified wheel (T21) which was intended to avoid infringement. According to the evidence of Mr. Pucek for Lego the differences between the two Tyco wheels were only technical. Mr. Martin for Tyco admitted under cross-examination that the modified Tyco wheel was really the same thing with added ornamentation of “steps and spikes”. He also admitted that all that was needed in the way of technical adjustment to manufacture the modified wheel was to make new inserts into the cavity of the mould. Clearly this was a case where there were colourable additions of mere ornamentation to an infringing article which remained, in its modified form, a substantial reproduction of the 1974 Lego drawing. 340. There remain three Tyco articles which require separate consideration. They are the 2 x 2 x 2 windshield (T16 and T16a) the hub with knobs (T19) and the adapter brick. 341. In the case of the windshield, Tyco first made a version (T16a) which clearly substantially reproduced Lego's 1975 drawing. To avoid infringement Tyco then changed its design and made a modified version (T16) which the judge held to be quite different from the original Tyco article and not to be a substantial reproduction of the Lego counterpart or the 1975 Lego drawing. It was not in dispute that, after the action started but before the trial. Tyco informed Lego bv letter that Tyco did not intend to make the infringing version of the windshield (T16a). It was intending to make only the modified version (T16) which the judge has held not to be an infringing article. 342. On appeal Tyco complains that it should not have been injuncted in respect of its original windshield (T16a) when it had been made clear before the trial that it had no intention to continue to make it. I agree. It seems to me that the extension of the injunction to the original windshield (T16a) (referred to in the order as T16A) was an understandable oversight in a complex case. Mr. Rogers for Lego contended that Lego should at least have the benefit of a declaration relating to this article. However it is well settled that the court does not make a declaration if there is no issue between the parties. I would vary the order made below by deleting the reference to T16A. The same point arises in relation to the infringing unmodified versions of the Tyco pre-school trailer wheel (t5) and 3 x 4 roof tile (T17A). I would vary the order by deleting reference to them. 343. As to the Tyco hub with knobs (T19), this was held by the judge not to be an infringing article. That finding has not been challenged on appeal. The inclusion of the article in the order was clearly a slip. The order should be varied accordingly. 344. Mr. Jacob informed this court that the Tyco adapter had never been produced in evidence. It was not mentioned in the judge’s order. We were shown a version of it which had no exhibit number. There is no equivalent Lego drawing or product. We were told that it stood or fell with the Lego 2 x 4 standard brick. The judge never referred to it directly in his judgment. It was never referred to during the argument of the appeal except in passing. I therefore consider this court should not deal with it on appeal. 345. If I am wrong in holding this view and it can be said that in all the circumstances we are obliged to decide whether the Tyco adapter has infringed Lego’s copyright. I would accept that any infringement must be of the 1976 drawing of Lego’s standard 2 x 4 brick. In my judgment there are substantial material differences between the Tyco adapter and the Lego 2 x 4 brick and the 1976 drawing of that brick. The Tyco adapter has only one central inner fixing tube, whereas the Lego 2 x 4 block has three. The Tyco adapter has flow rib and six side ribs. The Lego drawing portrays none of these features. In my judgment, although there is an undoubted similarity between the two articles, the Tyco adapter has sufficient difference, which are more than merely colourable, to give any drawing on which it is based an originality of its own and to prevent it from being a substantial indirect reproduction of the drawing of the Lego 2 x 4 standard brick. 346. As to issue (3) (Section 9(8) of the Copyright Act 1956) Tyco contends that the judge wrongly held that section 9(8) did not provide them with a defence. This defence is not available or material in the case of the Tyco elements which have not infringed Lego's copyright and which I have already indicated should be excluded from the judge's order. The elements excluded are the original versions of the windshield (T16a), the roof tile (T17A) and the pre-school trailer wheel (T5), which Tyco no longer makes or threatens to make. Also excluded from the order on the grounds of non-infringement are the Tyco adapter, the modified windshield (T16) and the hub with knobs (T19). 347. Accordingly, (adopting the sequence of lettering employed in the earlier part of this judgment dealing with the issue of originality by reference to the corresponding Lego elements and drawings) the Tyco elements to which the defence under section 9(8) could be applicable are as follows:-
348. Section 9(8) provides as follows:-
349. After setting out the provisions of section 9(8) in his judgment the judge cited most of the passage in the leading speech of Lord Wilberforce in the L.B. (Plastics) Case at page 622 expounding on the nature and the manner of application of the lay recognition test which that provision permits a defendant to invoke as an ultimate line of defence after he has been held, pursuant to section 3(5)(a) and 49(1) of the Act, to have infringed the plaintiff's copyright in an artistic work by the making of a three dimensional object. The passage cited by the judge includes the following observations by Lord Wilberforce:-
350. Lord Wilberforce went on to say:-
351. Lord Hailsham concluded his consideration of the section 9(8) defence by saying:-
352. Having based his approach on the guidance provided by Lord Wilberforce in the L.B. Plastics Case the judge described his function in the following terms:-
353. He then concluded:-
354. In my judgment the judge demonstrated that he had approached his task in applying the lay recognition test on a correct understanding of that test and the manner of its application. As Lord Wilberforce observed in the L.B. (Plastics) Case at p.622, the conclusion of the judge when applying the lay recognition test is one of fact. If, as here, the correct test has been applied by the judge this court should not disturb his decision or substitute one of its own. 355. The judge compared the Tyco elements with all the corresponding Lego drawings. He did not refer to the drawings specifically but it is implicit in his decision that he considered that a comparison by him as a non-expert of the eleven Tyco elements specified above with the post 1972 drawings of their Lego counterparts left him in no doubt that each of the eleven three dimensional Tyco elements reproduced a substantial part of the post 1972 drawing of its Lego counterpart. 356. For Tyco, Mr. Jacob sought to persuade us that where, as in the present case, there was a line of drawings of most of the Lego elements the non-expert judge applying the lay recognition test should compare the Tyco element with not one drawing but the whole series of drawings. Otherwise, he submitted, it would be unrealistic to make a comparison of the Tyco element with only one corresponding Lego drawing. This was really a return to the theme that the 2 x 4 Tyco brick (T14) resembled more closely the 1968 than the 1976 drawing of the 2 x 4 Lego brick. 357. He acknowledged that his problem was to justify placing in the hands of the judicial non-expert more than one drawing when conducting the lay recognition test. In his reply he sought to rely on a passage in the judgment of Buckley L.J. in Solar Thomson Engineering Co. Ltd. v. Barton(16) at p.559 to the effect that the notional unskilled observer postulated by section 9(8) should be entitled to interpret a sectional drawing before him “in the light of the contempoary associated drawings.” 358. Mr. Jacob contended that it followed that the 1968 drawing of the Lego 2 x 4 standard block was to be treated as a contemporary drawing associated with the 1976 drawing of the same block which was before Mr. Pucek when he made the 1976 drawing. However this argument fell to the ground in so far as it relied on the Solar Thomson Case because Mr. Aldous was quick to point out by reference to pages 557-8 of the report of that case that the court was there concerned with the alleged infringement of the copyright of one of two drawings which were on the same sheet. The drawing in question portrayed a section of a rubber ring. The associated drawing on the same sheet consisted of three concentric circles representing the rubber ring in plan form. The drawings were thus interrelated contemporaneous drawings of different aspects of the same article and constituted a set. 359. In the present case, where there were separate successive drawings of not one but several aspects of the same Lego element, the drawings were not associated in the sense that the two contemporaneous drawings were so regarded in the Solar Thomson Case. Each of the eleven drawings mentioned above was required by section 9(8) to be compared alone as a separate artistic work with the relevant Tyco element for the purposes of the lay recognition test. Accordingly I am unable to accept that there is any sound basis for Mr. Jacob's argument that the judge should have had regard to any pre 1973 drawing of a Lego element when comparing a post 1972 drawing of the same element with the relevant Tyco element for the purposes of the lay recognition test. 360. As regards the Tyco plate (T1) and pre-school trailer wheel (T21), Mr. Jacob sought to emphasise the differences between those elements and the relevant drawings of their Lego counterparts. In these cases there were no previous Lego drawings and the “associated drawings” argument was not available. 361. I accept that a comparison of the Tyco plate (T1) with the 1979 drawing of the corresponding Duplo 6 x 12 plate and a comparison of the Tyco pre-school trailer wheel (T21) with the 1974 drawing of the corresponding Duplo trailer wheel does throw up differences as well as similarities. This seems to me to be obvious. I also accept that the judge should have followed the approach of Whitford J. in the L.B. (Plastics) Case at pages 588-9 and given his reasons with some particularity for his decision when applying the lay recognition test. If he had done so I venture to suggest that he may have encountered some difficulties with the Lego moulds and the Tyco adapter. 362. Be that as it may, I would, for my part, have come to the same conclusions as the judge regarding the eleven Tyco elements which I now consider to be the only Tyco elements eligible for the lay recognition test. Even if that were not so: I do not accept Mr. Jacob's contention that no reasonable court could have reached the judge’s conclusion regarding the Tyco plate (T1). That element and the Tyco trailer wheel (T21) can fairly be said to have had more differences from the relative corresponding Lego drawings than the other nine Tyco elements, but in arriving at his decision under section 9(8) the judge was making a decision of fact after addressing himself correctly on the law. I do not consider that an appellate court, even if it disagreed with the judge, would be entitled to disturb that finding when there was evidence before him upon which he could reasonably have made it. 363. Issue (4) (Section 10 of the Copyright Act 1956) raised an argument which was not relied upon before Jones J. The argument was based on section 10 of the Copyright Act 1956 as amended by the Design Copyright Act 1968 because on the 1st January 1973 it was the amended Copyright Act 1956 which became applicable in Hong Kong. 364. The provisions of section 10 which are relevant fop the purposes of Mr. Jacob's argument are subsections (2), (3) and (7) which provide as follows:-
365. Mr. Jacob’s argument proceeds along the following lines. The combined effect of section 10(2) and (3), where they are applicable, is that after a fifteen year period it is not an infringement of an artistic copyright to do certain acts which would be within the scope of an imaginary registered design (called a ‘corresponding design’) and its associated designs. The fifteen year period begins when a corresponding design was first sold. So far I see no reason to doubt Mr. Jacob’s statement of the effect of section 10(2) and (3). 366. The argument then continues on a more questionable basis. Mr. Jacob says that section 10(7) defines a corresponding design as being a design which, when applied to to an article, results in a reproduction of the artistic work. He adds that section 10(7) is intended to define certain features of shape and configuration which constitute a design. He then argues that the provision identifies such features by indicating how they would be produced, but what matters is not the method of production but the design so produced. 367. On this foundation (which is in my judgment fallacious) he bases the further proposition that if you substantially reproduce the 1976 Lego drawing you end up with certain features of shape and configuration. If you ask when were articles of substantially that shape and configuration first sold by the copyright owner, the answer is in 1958 when the third generation Lego brick was first marketed. It follows, Mr. Jacob submits, that Lego's 15 years of protection for this registrable design have expired and no amount of re-drawing will enable them to revive it. 368. Mr. Aldous was understandably brief in dealing with this argument which is clearly based on the false premise that section 10(7) defines a corresponding design without connecting it to an artistic work to which section 10 applies. It amounts to an ingenious attempt to draw a veil over the fact that paragraph 8(1) of the Seventh Schedule to the Copyright Act 1956 provides that section 10 of the Act does not apply to artistic works made before the commencement of that section. 369. If section 10 is read with this in mind, Mr. Jacob’s argument is demonstrably untenable because it becomes clear that every reference to an artistic work in that section is intended to be a reference to a work to which the section applies and no other. It follows that the corresponding design referred to in section 10(2)(a) can only relate to a post 1972 artistic work. The same applies to the corresponding design and associated designs in relation to the work referred to in section 10(3). Likewise in section 10(7) the corresponding design can only be intended to be defined in relation to a post 1972 artistic work which is reproduced when the design is applied to an article. 370. Furthermore section 10(2) contemplates and is not activated until inter alia a corresponding design is applied industrially by the owner of the copyright in a post 1972 artistic work at a time when copyright subsists in that work. That time can only be after 1972. 371. Mr. Jacob’s argument leads to the extraordinary result, albeit satisfactory for Tyco which has failed on the originality and infringement issues, that Lego’s 1976 drawings were out of copyright under section 10 before they were made, because the designs constituted by the 1976 drawings were being multiplied industrially by Lego in 1958 when Lego began to reproduce their third generation drawings. For the reasons given above I am unable to accept Mr. Jacob's attempt to extend the ambit of section 10 in such a manner as to reach back and undo the effect of paragraph 8(1) of the Seventh Schedule. 372. On issue (5) (estoppel in various forms) I agree with the conclusions and reasoning of Fuad J.A. in relation to the post 1972 drawings. 373. Accordingly I would allow the appeal to the extent indicated in this judgment when dealing with Lego's moulds and pre 1973 drawings and also to the extent of further varying the order made by Jones J. in the manner indicated in this judgment when dealing with infringement of the post 1972 drawings. 374. I conclude by expressing my appreciation to the three specialist leading counsel for their able assistance during the prolonged hearing of this appeal. 26th March 1987 Robin Jacob, Q.C. & Peter Clayton (Barker & McKenzie) for the Appellant. William Aldous, Q.C., Anthony Rogers, Q.C. & Andrew Liao (Wilkinson & Grist) for the Respondent. 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