Thornton Hall Manufacturing Ltd v Shanton Apparel Ltd [1989] 3 NZLR 304 (CA)

This was a case about whether copyright subsisted in underlying artistic works related to a long-sleeved dress and, if so, whether such copyright had been infringed. The plaintiff, Thornton Hall Manufacturing Ltd (Thornton), brought proceedings in the High Court in 1987, claiming that the defendant, Shanton Apparel Ltd (Shanton), had offered for sale a copy of its dress.

Thornton claimed that copyright subsisted in its original sketches, the pattern produced from the sketches and in a pre-production sample dress.

In the High Court judgment of 9 December 1988 (reported as Thornton Hall Manufacturing Ltd v Shanton Apparel (No. 2) [1989] 1 NZLR 239), Hillyer J found that the sketches, being drawings, were artistic works under the Copyright Act 1962 (1962 Act).

Hillyer J also found that the pattern was a drawing. Even though the pattern was subsequently cut out this did not disqualify it from being a drawing or destroy its artistic quality.

Finally, Hillyer J found that the sample dress came within the term “model” and was, therefore, also an artistic work under the 1962 Act.

All the artistic works were held to be original. In relation to the sketches and patterns, Hillyer J observed that what was original was “the way in which each of the individual characteristics of the dress have been brought together” by the authors “without copying the dress as a whole from any other dress” (at 245). In relation to the sample dress, Hillyer J considered that skill and labour went into creating it. The Judge said it was
“not merely a copy of some other dress” (at 245).

The evidence was also sufficient to infer that the authors of the works were at least domiciled in New Zealand, and therefore, Thornton’s ownership of the works was established under the 1962 Act.

Turning to the question of infringement, Hillyer J held that copyright in Thornton’s artistic works had been infringed by Shanton. In the course of reaching this conclusion, Hillyer J remarked (at 246):

The question of copying is of some difficulty and the best test that appears to have been formulated is simply that something is a copy if it brings to mind the original. In other words, a copy is a copy if it looks like a copy, and even to my untutored eye, looking at the two dresses I would have no hesitation in holding that one was a copy of the other. The multiplication of coincidences is such that it could not be accidental.

The Judge also placed some weight on the absence of evidence from the Shanton denying copying.

Hillyer J’s judgment was appealed (as were two other judgments related to the dispute, which are not discussed here).

On appeal, Shanton did not challenge the finding that copyright subsisted in the sketches and the pattern. However, it did challenge Hillyer J’s finding that copyright subsisted in the sample dress. Shanton argued that the sample dress lacked originality as was “no more” than a 3D reproduction of the sketches and pattern.

The Court of Appeal rejected this argument. The sample dress was not produced from the pattern with no further addition of skill and labour. On the evidence, the Court of Appeal agreed with Hillyer J, and held at 310:

… the sample dress was itself an artistic work being a model with its own originality in the chain of creativity from drawing board to production of the merchandise.

The Court of Appeal also rejected Shanton’s ground of appeal concerning ownership of copyright.

Turning to infringement, Shanton argued that Hillyer J had “over-simplified the test to be applied”. It was argued that in the area of women’s fashion clothing there was limited scope for “true originality” and “even minor differences can assume significant importance” (at 312).

The Court of Appeal disagreed. The Court found that Hillyer J’s conclusion on objective similarity and substantial reproduction was supported by the evidence, and it had not been shown that he applied the wrong principle (at 313). The Court further observed at 313:

When one dress is alleged to be a copy of another a visual comparison of the two is critical. In a visual comparison the eye does not catalogue individual differences and similarities to determine if there is objective similarity and substantial reproduction. The eye will be left with an overall impression in which either substantial similarity prevails or it does not.

The Court of Appeal also rejected Shanton’s challenge to Hillyer J’s holding on causal connection. In the Court’s view, Hillyer J was entitled, based on the “multiplicity of coincidences” and Shanton’s evidence which failed to display the inference of copying, to find there was a causal connection.