27 December 2014

Designs in Ice Cream Vans: Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd and Others

There are often a lot of cases brought by the fashion trade or toy or novelty manufacturers in the run up to Christmas. There don't seem to have been all that many this year judging by the Chancery Division cause list and the Patent Court and Intellectual Property Enterprise Court ("IPEC") diaries. However, there has been a case about ice cream or rather ice cream vans. In Whitby Specialist Vehicles Ltd. v Yorkshire v Yorkshire Specialist Vehicles Ltd [2014] EWHC 4242 (Pat) the biggest manufacturer of ice cream vans in the UK sued one of its competitors or unregistered Community design, design right and trade mark infringement.

The trial took place in the Patents Court on the 10, 12-14, 20 Nov 2014 and judgment was delivered on the 17 Dec 2014. Usually actions of this kind proceed in IPEC where trials are limited to two days and costs are capped at £50,000 for the trial on liability and £25,000 for the account or inquiry. Those not in the case have to wonder why that did not happen in this case. A possible explanation is that the claimant had  no incentive to limit costs that it confidently expected to recover from the other side and the defendants did not know about IPEC because they had no legal representation for much of the litigation. If that is what happened, it is an object lesson that while lawyers may be expensive not having a lawyer can be even more expensive - indeed sometimes ruinously expensive. Even if this case was unwinnable it could still have been settled. The costs of an early settlement would almost certainly have been less than those of a lengthy trial in the Patents Court.

Ice cream vans generally consist of a chassis and cab manufactured by a commercial van manufacturer onto which a body designed and manufactured by a specialist supplier such as Whitby Specialist Vehicles Ltd. ("Whitby") is added. The conversion can be done by starting from a bare commercial van chassis or a complete commercial van and adding the body and interior fittings which are commonly made of moulded glass reinforced fibreglass panels ("GRP").

In 2006 Whitby designed a new model ice cream van, known as the Whitby Mondial, based on a Mercedes Sprinter chassis.  Photos of the Mondial appear above. No design drawings were created apart from rough sketches which were not retained. Instead Whitby created wooden "plugs" from which moulds were made for the creation of the GRP panels. In addition to those panels, Whitby designed certain mechanical components, in particular a stand for a soft ice cream making machine and a drive mechanism leading from the engine to the machine. Whitby registered the design of the Mondial and representations of the front, rear and side elevations of the registered design appear with those photos.

The defendant company, Yorkshire Specialist Vehicles Ltd. ("Yorkshire"), manufactured the Millennium van which is also shown in the photographs above. At trial the second and third defendants, who ran Yorkshire, admitted that they had used panels from a Mondial as plugs to produce moulds for GRP panels for the Millennium vam and that they had also copied the mechanical components for their product. Much of the trial was about whether and how far the fourth defendant, who was the second and third defendants' father, had participated in the copying.

Between paras [17] and [30] Mr Justice Arnold directed himself on the relevant provisions of the Designs Directive (Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs OJ L 289 , 28/10/1998 P. 0028 - 0035), the Registered Designs Act 2001 and the case law. He identified the "informed user" as an ice cream van operator. From the perspective of such a user he considered photos of ice cream vans that had been supplied by the parties in their pleadings or on disclosure. He listed the common features of ice cream van design and the constraints on design freedom which he took to be cost, regulatory, practical and commercial requirements. He compared features of the registered design with the common features that he had identified and concluded at para [37] that the registered design possessed individual character and was therefore valid though he noted the Whitby's concession at para [38] that the registered design afforded a "relatively narrow scope of protection" which was right given that the Registered Design did not represent a significant departure from the design corpus and the constraints on the designer's freedom mentioned above. He compared features of the registered design with the Millennium van in a table and concluded at para [40] that the Millennium van did not produce a different overall impression and that it therefore infringed the registered design,

As usual, his Lordship analysed the legislation and case law thoroughly and accurately. The case is worth reading and following for that analysis alone. However, in the last few paragraphs he appears to have conflated the exercise of determining validity with that of deciding whether the registered design had been infringed. For instance, he compared features of the Millennium with the registered design at paragraph [36] before he had determined whether the registered design had individual character and was therefore valid. When construing a patent it is usual to consider the claims without reference to the alleged infringement. Once the specification is understood and the scope of the monopoly has been determined the judge decides whether the defendant's product or process falls within that monopoly. While there may be nothing in the legislation and authorities to mandate a similar approach in design law it is logical to do so. Because copying in this case was so obvious and was eventually admitted a different approach would have reached the same result. Nevertheless, there may be other cases when it would be safer to determine validity and infringement in separate exercises.

The judge next considered Whitby's claim for infringement of unregistered design right. Between paras [40] and [53], he set out the legislation and case law including the changes to the definition of "design" which I had discussed in my article "What is the definition of "design" in s.213 (2) of the Copyright, Designs and Patents Act 1988 following the deletion of "any aspect of" from the sub-section" 13 Dec 2014. In DKH Retail Ltd v H. Young (Operations) Ltd [2014] EHWC 4034 (IPEC) at [10]-[18] it was agreed that the amendment to s.213 (2) of the Copyright Designs and Patents Act 1988 by s.1 (2) of the Intellectual Property Act 2014 was fully retrospective,
"with the potential consequence that an act committed prior to 1 October 2014 which was an infringement of design right as the law then stood retropectively ceased to have been an infringement."
Mr Justice Arnold had some doubts as to whether that was correct though it did not matter for the purposes of the case. He found that some aspects of the design were commonplace, others fell within the "must fit" and "must match" exceptions and that there were differences between the Mondial and the Millennium but nonetheless concluded that the defendants' van was substantially to the design of the claimant's van and drive mechanism. Accordingly, Whitby's unregistered design rights had been infringed.

The drive shaft cover of Whitby's drive shaft bore its trade mark WHITBY MORRISON. In copying the drive shaft of Yorkshire also copied those words. By making and selling drove shafts bearing that marl Yorkshire infringed s.10 (1) of the Trade Marks Act 1994.

Although he denied copying there was evidence that the fourth defendant had funded the purchase of a Mercedes van, its conversion by Whitby and the conversion by the other defendants of other vans. There was also evidence that the fourth defendant knew how to fit GRPs. The judge concluded that the fourth defendant had participated in the copying, conversion and sale of a vehicle that he knew to be an infringing article and that he was therefore jointly and severally liable in the registered design, design right and trade mark infringement with the other defendants.

This has been an expensive exercise for the defendants and there is more expense to come if Whitby seeks an inquiry as to damages or an account of profits but in one respect they have got off lightly. Had they carried out their activities after 1 Oct 2014 they might have been prosecuted under s.35ZA of the Registered Designs Act 2014 which carries a maximum penalty of 10 years imprisonment, an unlimited fine or both.

Should anyone wish to discuss this case or indeed registered design, design right or trade mark law in general, he or she should call me after the Christmas holidays on 020 7404 5252 or use my contact form. I can also be reached through Facebook, G+, Linkedin, twitter or Xing.

20 December 2014

Is Infringement of a Foreign Patent akin to Highway Robbery?

Patents: Les Laboratoires Servier and another v Apotex Inc and others [2014] UKSC 55, [2014] 3 WLR 1257, [2014] WLR(D) 452, [2014] BUS LR 1217, UK Supreme Court

In Everet v. Williams (1893), 9 L.Q. Rev. 197, the highwayman John Everet sued his partner in crime Joseph Williams "for discovery, an account, and general relief" for dealing "with several gentlemen for divers watches, rings, swords, canes, hats, cloaks, horses, bridles, saddles, and other things" which they acquired "at a very cheap rate". The court dismissed the action on the ground that no action arises from a disgraceful act ("ex turpi causa non oritur actio"), fined the claimant's solicitors and ordered them to pay the defendant's costs. They got off lightly. Their client and the defendant were arrested, brought to trial for their "dealings" and hanged. You can find out more about the case in The Highwayman's Case.

Fast forward to 2008.  In  Les Laboratoires Servier and another v Apotex Inc and others  [2008] EWHC 2347 (Ch), [2009] FSR 3 (9 Oct 2008) Mr Justice Norris awarded the Apotex companies ("Apotex") £17.5 million upon the Servier group ("Servier")'s cross-undertaking in damages because the Apotex had been prevented from importing perindopril erbumine tablets from Canada and selling them in the United Kingdom by an interim injunction that was subsequently discharged (see my case note Interim Injunctions: Les Laboratoires Servier v Apotex Inc 10 Oct 2008).  However, the manufacturer of those tablets in Canada by the defendants had become unlawful when Madam Justice Snider held in Les Laboratoires Servier and others v Apotext Inc, and another 67 CPR (4th) 241; [2008] FCJ No 1094 (QL); 332 FTR 193 that such manufacture infringed a patent for the drug that had been granted to one of the Servier companies. Servier had asked Mr Justice Norris for permission to amend their points of defence in the inquiry proceedings to plead Madam Justice Snider's decision but the judge refused to allow them to do so on the grounds that they had applied for permission too late. Servier appealed to the Court of Appeal which allowed the amendment (Les Laboratoires Servier and another v Apotex Inc and others [2010] EWCA Civ 279).

By the time the appeal was heard Apotex had already received the £17.5 million that had been awarded to them by Mr Justice Norris. The effect of the Court of Appeal's decision was that those moneys had to be treated as an interim payment.  The question
"whether a patentee who has obtained an interim injunction from this court to restrain infringement of a European patent (UK) which is subsequently held invalid should compensate the defendant for losses sustained as a result of being prevented by the injunction from selling goods manufactured by the defendant in infringement of a valid foreign patent owned by the same group of companies"
came before Mr Justice Arnold in  Les Laboratoires Servier and another v Apotex Inc and others [2011] RPC 20, [2011] EWHC 730 (Pat). His Lordship held that it should not and because such claim was barred by the ex turpi cause rule and he ordered Apotex to repay the £17.5 million that they had been awarded by Mr Justice Norris. Apotext appealed to the Court of Appeal which allowed the appeal (Les Laboratoires Servier and another v Apotex Inc and others [2012] EWCA Civ 593, [2012] WLR(D) 138, [2013] RPC 21, [2013] Bus LR 80. One of the reasons why the Court of Appeal allowed the appeal was that Apotex had agreed to give credit in the English litigation for any damages that might be awarded against them in Canada. Servier appealed to the Supreme Court.

The issue before their Lordships was whether the rule that had prevented one highway robber from claiming an account from another also prevented the defendants from claiming damages for being prevented from infringing a patent in Canada.  The point was summed up neatly by Lord Sumption at paragraph [9] of his judgment:
"(1) Does the infringement of a foreign patent rights constitute a relevant illegality ("turpitude") for the purpose of the defence?
(2) If so, is Apotex seeking to found its claim on it?
(3) Is Servier entitled to take the public policy point having given an undertaking in damages?"
Another way of putting it might be "is foreign patent infringement akin to highway robbery?"

The Court's first task was to determine what is meant by turpitude? At paragraph [25] of his judgment Lord Sumption said:
"The ex turpi causa principle is concerned with claims founded on acts which are contrary to the public law of the state and engage the public interest. The paradigm case is, as I have said, a criminal act. In addition, it is concerned with a limited category of acts which, while not necessarily criminal, can conveniently be described as "quasi-criminal" because they engage the public interest in the same way. Leaving aside the rather special case of contracts prohibited by law, which can give rise to no enforceable rights, this additional category of non-criminal acts giving rise to the defence includes cases of dishonesty or corruption, which have always been regarded as engaging the public interest even in the context of purely civil disputes; some anomalous categories of misconduct, such as prostitution, which without itself being criminal are contrary to public policy and involve criminal liability on the part of secondary parties; and the infringement of statutory rules enacted for the protection of the public interest and attracting civil sanctions of a penal character, such as the competition law considered by Flaux J in Safeway Stores Ltd v Twigger [2010] 3 All ER 577."
There were some cases that suggested that the principle might be wider than that but apart from those decisions
"the researches of counsel have uncovered no cases in the long and much-litigated history of the illegality defence, in which it has been applied to acts which are neither criminal nor quasi-criminal but merely tortious or in breach of contract."
His Lordship reasoned:
"In my opinion the question what constitutes "turpitude" for the purpose of the defence depends on the legal character of the acts relied on. It means criminal acts, and what I have called quasi-criminal acts. This is because only acts in these categories engage the public interest which is the foundation of the illegality defence. Torts (other than those of which dishonesty is an essential element), breaches of contract, statutory and other civil wrongs, offend against interests which are essentially private, not public. There is no reason in such a case for the law to withhold its ordinary remedies. The public interest is sufficiently served by the availability of a system of corrective justice to regulate their consequences as between the parties affected."
He added, at paragraph [29]  that there may be "exceptional cases where even criminal and quasi-criminal acts will not constitute turpitude for the purposes of the illegality defence." In his Lordship's opinion
"the illegality defence is not engaged by the consideration that Apotex's lost profits would have been made by selling product manufactured in Canada in breach of Servier's Canadian patent. A patent is of course a public grant of the state. But it does not follow that the public interest is engaged by a breach of the patentee's rights. The effect of the grant is simply to give rise to private rights of a character no different in principle from contractual rights or rights founded on breaches of statutory duty or other torts. The only relevant interest affected is that of the patentee, and that is sufficiently vindicated by the availability of damages for the infringements in Canada, which will be deducted from any recovery under Servier's undertaking in England. There is no public policy which could justify in addition the forfeiture of Apotex's rights."
Having decided that point, the other two issues listed at paragraph [9] of Lord Sumption's judgment did not arise.

Lord Mance agreed with Lord Sumption that the appeal should fail on the simple basis that the manufacture and supply of product in breach of the Canadian patent would not have involved turpitude such as to engage the maxim ex turpi cause action non oritur. 

Lord Toulson thought that Servier was attempting to extend the doctrine of illegality beyond any previously reported decision in circumstances where he could see no good public policy reason to do so.

The conclusion of the Supreme Court was that infringing a foreign patent is not like highway robbery. If anyone wants to discuss this fascinating case, public policy, interim injunctions or patent law in particular, he or she should not hesitate to call me on 020 7404 5252 during office hours or message me through my contact form.

13 December 2014

What is the definition of "design" in s.213 (2) of the Copyright, Designs and Patents Act 1988 following the deletion of "any aspect of" from the sub-section

Jane Lambert

In DKH Retail Ltd v H. Young (Operations) Ltd the claimant, which claimed design rights and unregistered Community design in relation to the front portion and hood of a range of gilets sold under the product name Academy under the Superdry brand sued the defendant for importing and selling a range of Glaisdale gilets under the Animal brand. The defendant raised the usual defences on subsistence, ownership and infringement. 

This case is interesting because it is the first judicial analysis of the effect of the deletion by s.1 (1) of the Intellectual Property Act 2014 of the words "any aspect of" from the definition of "design" in s.213 (2) of the Copyright, Designs and Patents Act 1988. I had discussed that deletion in "How the Intellectual Property Act 2014 will change British Unregistered Design Right Law" 11 June 2014 and "The Intellectual Property Bill 2013" 28 May 2013.  Even though the case began before the Intellectual Property Act 2014 received royal assent both parties agreed that "design" for the purposes of this litigation had to be construed in accordance with the new definition:
"In this Part “design” means the design of ... the shape or configuration (whether internal or external) of the whole or part of an article."
Judge Hacon began his task by determining what the deleted words used to mean.  He considered Lord Justice Jacob's discussion at paragraphs [22] and [23] of Dyson Ltd v Qualtex (UK) Ltd [2006] RPC 31, [2006] EWCA Civ 166 and concluded at paragraph [12] of his judgment that
"........ the reason for the extreme width of the definition of 'design', as Jacob LJ saw it, was that the definition of 'design' including the shape or configuration of any part of an article, in contrast with copyright which subsists in the copyright work as a whole. Jacob LJ appears to suggest that "any aspect of" in s.213(2) has a limiting function, that is to say it excludes from the definition of 'design' a feature which is neither discernible nor recognisable."
The problem  with that interpretation was that the deletion of "any aspect of" from s.213 (2) would extend the scope of what qualifies as a design. That would be inconsistent with paragraph 10 of the explanatory note which stated
"Subsection (1) limits the protection for trivial features of designs, by making sure that protection does not extend to "any aspect" of the shape or configuration of the whole or part of an article. It is expected that this will reduce the tendency to overstate the breadth of unregistered design right and the uncertainty this creates, particularly in relation to actions before courts."
Counsel for the claimant had argued that the deletion of "any aspect of" from the definition had made no difference to the definition of "design" at all but the judge rejected that contention as  contrary to the usual principles of statutory construction. He thought he must assume that the subsection makes a difference and, guided by the explanatory note, he must further assume that the scope of what can constitute a design under s.213 (2) has narrowed.  He said at paragraph [14]:
"The words "any aspect of" permitted variations of what a party could claim as a design which are no longer available. Spotting why that might be is not easily done just by looking at the words of s.213 (2)."
The judge also considered the definition of "Community design" in art 3 of the Community Design Regulation and while there was
"no reason to suppose that Parliament intended the new definition of 'design' in s.213 (2) to be identical to that in the Design Regulation and plainly it isn't ...... for policy reasons of consistency where that can be achieved, there is much to be said for treating "the design of the shape or configuration (whether internal or external) of the whole or part of an article" as having a meaning as close as possible to "the appearance of the whole or part of a product"
"One route to such a result would be to interpret the effect of s.1 (1) of the 2014 Act as being that it no longer permits a claim to unregistered design right to extend to designs other than those specifically embodied in all or part of the claimant's article, i.e. no more UK unregistered design rights in abstract designs (see above)."
In any event, it made no difference to the outcome of the claim before His Honour.

The rest of the case turned very much on its own facts. The judge concluded that design right and unregistered Community design  did subsist in the features of the gilet relief upon, that such design rights belonged to the claimant and that those rights had been infringed by importation and sale of the gilet. However, the defendants only had knowledge that the gilet was an infringing article 14 days after receiving the letter before action and for that reason the judge would not award additional damages pursuant to art 13 (1) of the Entitlement Directive.

11 December 2014

Is this a copy? John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions Ltd

In John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions Ltd[2014] EWHC 3779 (IPEC) (21 Nov 2014) Judge Hacon had to decide whether the fabric used to make the dress in the bottom photo was a copy of the fabric in the top one.

The Facts
Some time before the beginning of Aug 2012 Lee Ann Fashions Ltd. ("Lee Ann") received the following design brief from Marks & Spencer:
"Print Direction 
More primitive wood blocking prints, bold batiks, multi-stripes and tribal prints. Often these are anchored with stone and Black with highlights of the colour pops of the collection"

On 2 Aug 2012 employees from Lee Ann met a sales executive of John Kaldor Fabricmaker UK Ltd ("Kaldor"). Lee Ann invited Kaldor to supply samples of its materials so that Kaldor could bid for Marks & Spencer's order.

Kaldor supplied 22 samples including 4 metres of the fabric in Annex 1. Lee Ann offered to supply Marks & Spencer dresses made from that fabric. The offer was accepted and Lee Ann won Marks's contract to supply it with tribal print dresses for its "Per Una" range.

Lee Ann asked Kaldor to quote for supplying the fabric on 25 Sept. For some reason or other, Lee Ann decided not to order from Kaldor and instructed one of its own designers called Rachel Vance ("Mrs Vance") to design a fabric which would satisfy Marks & Spencer's design brief.

The judge explained what happened at paragraph [36] of his judgment:
"Mrs Vance had earlier created tribal prints which were collected in her computer archive. She selected one of these as her starting point. It was referred to as 'the Earlier Design'. It contained a number shapes in juxtaposition to create an African 'tribal' look. Mrs Vance selected the triangles, chevrons and 'bow tie and dot' shapes. Two triangles were merged to create a fourth, diamond shape. Using Photoshop the four individual shapes were distorted to make them more individual. 'Swatch tiles' of each of the four shapes were created and juxtaposed. The tiles were distorted and stretched to alter the design. A 'repeat tile' was then created which formed the basic unit which is repeated to create the design. Finally colours were added using computer brushstrokes. The design was given the number RAS-790 and six colour versions were identified as RAS-790A to F. Images of these were sent to Mark & Spencer. They selected RAS-790C, which was the design to which the fabric alleged to infringe was later made. All this was done on 27 September 2012."
The Claim
Kaldor sued Lee Ann for infringement of copyright and unregistered Community design right.  By the time the action came to trial it was common ground that the fabric in Annex 1 was an original artistic work in which copyright subsists pursuant to s. 1 (1) (a) of the Copyright Designs and Patents Act 1988 ("CDPA") and that the design of that fabric was also an "unregistered Community design" within the meaning of art 1 (2) (a) of the Community Design Regulation (Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ EC No L 3 of 5.1.2002, p. 1)).

At paragraph [10] of his judgment His Honour directed himself as follows:
"Primary infringement of copyright pursuant to section 16 of the Copyright, Designs and Patents Act 1988 requires the claimant to establish that (1) the alleged infringing article was copied, directly or indirectly, from the copyright work and (2) the act of copying was done in relation to the work as a whole or any substantial part of it."
In most cases claimants have to point to similarities between the copyright work and the alleged copy and also to the defendant's access to the original to raise a presumption of copying. It is then up to a defendant to rebut that presumption by explaining away the similarities or showing that the alleged copy was created independently.

Referring to Stoddard International plc v William Lomas Carpets Ltd [2001] FSR 44, Designer Guild Limited v. Russell Williams (Textiles) Limited (Trading As Washington Dc)  [2000] UKHL 58, [2000] WLR 2416, [2001] 1 All ER 700, [2001] ECDR 10, [2001] FSR 11, [2001] FSR 113, [2000] 1 WLR 2416 (23 Nov 2000) and C-5/08 Infopaq International A/S v Danske Dagblades Forening  ECLI:EU:C:2009:465, [2009] ECDR 16, [2010] FSR 20, [2009] ECR I-6569, EU:C:2009:465, [2012] Bus LR 102, [2009] EUECJ C-5/08 (16 July 2009) Judge Hacon discerned the following guidance:
"(1) The first stage is to consider whether the claimant has established a prima facie inference of direct or indirect copying by reason of the similarities between the copyright work and the defendant's work.
(2) Similarities which constitute the expression of ideas that have no connection with the literary, dramatic, musical or artistic nature of the work are to be disregarded.
(3) Similarities not thus excluded but which are shown to be commonplace give rise to little or no inference of copying; the nearer a similarity approaches the strikingly original end of the spectrum, the greater weight it carries in supporting an inference of copying.
(4) If the claimant establishes a prima facie case of inferred copying, this may be rebutted by the defendant's evidence of independent design. The stronger the prima facie case, the more cogent the defendant's evidence must be to rebut the inference.
(5) If there is no finding of copying, there is no infringement. If there is a finding of fact that there has been copying, the next stage is to consider whether copying was done either in relation to the copyright work as a whole or any substantial part of it.
(6) Designers Guild sanctions two alternative approaches to the question of substantial part. They are alternatives because neither was expressly endorsed by a majority. The first is to disregard the defendant's work and to assess whether the similarities from which an inference of copying was drawn constitute a substantial part of the copyright work. This is a qualitative, not a quantitative assessment. The second, which applies only in an instance of altered copying, is to determine whether the infringer has incorporated a substantial part of the intellectual creation of the author of the work. In many cases the difference between the two approaches to an allegation of altered copying may be limited.
(7) To the extent that it has not already been excluded under step (3), a commonplace similarity can in any event make no contribution to any substantial part of the copyright work alleged to have been copied since it is not capable of attracting copyright protection.
(8) Assessment of whether there has been copying of a substantial part of the copyright work is a necessary and distinct step in the determination of whether the defendant has infringed. However, where copying has been established, on the facts it may be that this will almost inevitably lead to the conclusion that a substantial part of the copyright work has been copied. This may be influenced by the degree to which the finding of copying depended on the similarities between the two works."
Unregistered Community Design
Art 19 (2) of the Community Design Regulation confers on the holder of an unregistered Community design the same right to prevent "the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes "provided that the contested use results from copying the protected design." The article also provides that
"The contested use shall not be deemed to result from copying the protected design if it results from an independent work of creation by a designer who may be reasonably thought not to be familiar with the design made available to the public by the holder."
As the parties had agreed that an unregistered Community design subsisted in the design in Annex 1 and that the fabric used to make the dress in Annex 2 did not produce a different overall impression on the informed user (in this case "a person with a keen fashion sense and a good knowledge of the design of prints for women's fashion wear including tops, skirts and dresses") the only issue was whether the fabric in Annex 2 was the result of copying.

The Similarities
Kaldor alleged the following similarities between Annex 2 and Annex 1 in its particulars of claim:
"(a) the lines, patterns, contours, colours, shapes and dimensions (including relative dimensions) of the repeated small diamond block shapes;
(b) the lines, patterns, contours, colours, shapes and dimensions (including relative dimensions) of the repeated small triangle block shapes;
(c) the lines, patterns, contours, colours, shapes of the background pattern of the design being a mix of contrasting colours which appear to be "feathered" onto the fabric;
(d) the predominant use of four colours in the background pattern;
(e) the repeated use of diamond shapes in larger areas and triangles in smaller and fill-in areas on sections of the pattern;
(f) the repeated use of patched and spliced sections of the pattern in chunks on the fabric, interlocking with different repeated pattern sections at different angles, to build a multi-directional repeated pattern."
In comparing the designs Judge Hacon took into account the "design corpus" - that is to say, both sides' set of 10 designs to represent the design corpus - even though the design corpus is strictly relevant only to issues regarding Community design. He did so because he believed that they should be considered also in this context in order to give him some objective idea of where design features fall on the spectrum between commonplace and strikingly original. After considering the two designs, the corpus and the pleaded list of similarities the learned judge concluded that there was "a prima facie possibility of copying", but the possibility was "neither strong nor negligible".

The Rebuttal
Kaldor argued that the similarities between the fabrics resulted either from "conscious copying", "sub-conscious copying" or "indirect copying". There were discrepancies in Mrs Vance's evidence but she acknowledged those and corrected them. After observing her in the witness box the judge concluded at paragraph [48] that there has been no copying:
"The arguments advanced on behalf of John Kaldor are not in my view collectively enough for me to reject the clear evidence given by Mrs Vance that she created the design of the LA Fabric independently of the conscious influence of the JK Fabric. With regard to indirect copying, Mrs Vance said that she could not remember the precise words of instruction she was given by Ms Cook or the other individual at Lee Ann which led to her creation of the LA Fabric. She also said that she was given a general design brief, including the requirement of a tribal look, as opposed to specific instructions, by way of the starting point for her design process. She said that she came up with the design herself. I have no good and sufficient reason to reject that evidence. Finally there is Lee Ann's allegation of unconscious copying. That argument could only be sustained by a strong inference of copying from similarities between the two designs. As I have already stated, I do not find those similarities sufficiently compelling from which to infer a strong inference of copying."
In the absence of copying the claims for both infringement of copyright and infringement of unregistered Community design failed.

This case raises a number of interesting points and lessons.

The first is that Kaldor would have won had it registered its fabric design as a registered design in the UK under the Registered Designs Act 1949 or as a registered Community resign for the while EU under the Community Design Regulation as there was no dispute that the fabric used to make the dress in Annex 2 did not produce a different overall impression on the informed user as the fabric in Annex 1. Since there is no examination for design or Community design registration in either the Intellectual Property Office or the Office for Harmonization in the Internal Market design registration is a relatively cheap and easy exercise.

The second point is that the parties focused on essentials. At paragraph [7] the judge said:
"The parties are to be commended in taking a realistic view of which issues were really at stake. There was some judicial pressure exerted at the case management conference regarding subsistence and ownership of copyright but even allowing for that, the parties' conduct of these proceedings was both efficient and in my view rational."
At paragraph [8] he added:
"Without identifying particular proceedings, I should also record that in the IPEC what some regard as a traditional approach to litigation, that is to say taking every conceivable point on the chance that something might gain traction, is never appropriate."
All I would venture to add is that as it is now part of the overriding objective in CPR 1.1 (1) to deal with cases at "proportionate cost" His Honour's remarks could apply to all civil litigation and not just to proceedings in the Intellectual Property Enterprise Court.

Thirdly, neither party nor the judge raised the red bus case (Temple Island Collections Ltd v New English Teas Ltd and another [2012] EWPCC 1 (12 Jan 2012) which I discussed in "Copyright in Photographs: Temple Island Collections and Creation Records" 15 Jan 2012) even though Mrs Vance used Photoshop to create her designs just as the defendant did with its photo of the red bus in Temple Island. As the defendant's photo was taken independently of the claimant's it must have been the manipulation with Photoshop to enhance similarities that made the difference. It is not clear why that point was not discussed but my guess is that it is because of a consensus among intellectual property lawyers that Temple Island stands on its own very special facts.

Further Information
In the run up to Christmas there is a great temptation to copy in the fashion, toy and novelties trade and hence a lot of cases like John Kaldor. At one time the motions court (the old name for the Chancery interim applications court) was chockablok with applications for interim injunctions against market traders and discount stores for offloading lookalikes and knockoffs of the latest fashion item or craze. Rising litigation costs and the risk of having to pay the successful party's costs if the application is unsuccessful has cooled designers' ardour for this sort of relief but not extinguished it altogether. As an injunction is the relief that a designer really needs the small claims track of IPEC provides a cheap and relatively risk free means of getting one. If anyone wants to discuss this case or copyright or registered or unregistered Community design right infringement in general he or she can call me on 020 7404 5252 during office hours or use my contact form.