Copyright - Ashley Wilde Group Ltd. v BCPL Limited

Jane Lambert

Intellectual Property Enterprise Court (Judge Melissa Clarke) Ashley Wilde Group Ltd v BCPL Ltd [2019] EWHC 3166 (IPEC) (21 Nov2019)

This was an action for infringement of copyright in a prototype for a bed linen range.  An example of a duvet cover from that range appears at the top of the above photo together with an example of the allegedly infringing item at the bottom. The claimant's product, known as "Evangeline" was sold as part of the "Kylie Minogue at Home" range even though the prototype had been made by one of the claimant's employees and not by Kylie Minogue.   The defendant's, called "Amore", was under the "Buy Caprice Home" brand even though it had been designed not by the Caprice in question (the celebrity Caprice Bourret) but by a freelance designer.

In her judgment of 21 Nov 2019, Her Honour Judge Melissa Clarke dismissed the claim on the ground that there had been no copying.  She also made some important observations on the duty of experts when giving evidence to the court. The transcript of her judgment appears at  Ashley Wilde Group Ltd v BCPL Ltd [2019] EWHC 3166 (IPEC) (21 Nov 2019).

The defendant admitted that copyright subsisted in the claimant's prototype but denied copying.  In view of that concession, the judge did not identify the copyright work which is a pity because the exercise would have been illuminating. It could have been the paper or fabric model, CAD file or all three.  None of those would have fitted conveniently into the definition of "graphic work" in s.4 (1) (a) of The Copyright, Designs and Patents Act 1988 or indeed any of the other works in that subsection. Also, identifying "intellectual creation" could have been a problem.

Referring to the House of Lords' decision in Designer Guild Limited v. Russell Williams (Textiles) Limited (trading as Washington DC) [2000] 1 WLR 2416, [2001] FSR 11, [2000] UKHL 58, [2000] WLR 2416, [2001] 1 All ER 700, [2001] FSR 113, [2001] ECDR 10, Judge Melissa Clarke directed herself at paragraph [77] that the first step was a visual comparison of the Evangeline duvet cover and the Amore products, noting similarities and differences. In the rest of that paragraph, she listed the similarities and in the following paragraph the differences.  She accepted the claimant's submission that what matters is what is taken, not what is added. She reminded herself that per Designers Guild, the inquiry is directed to the similarities rather than the differences. When considering whether the similarities relied on are sufficiently close, numerous or extensive to be more likely the result of copying than coincidence, the court must discard what is commonplace or unoriginal or consists merely of general ideas.

In view of evidence from the designer of the Amore range and the defendant's expert that scallops, pleats and scalloped pleats had been widely used in textiles for centuries even though they had become briefly fashionable again in women's clothing, the judge discarded the general idea of a pleated scallop as a decorative motif on a duvet cover as commonplace, though she retained crescent-shaped pleated scallops. She also discarded as commonplace pleated scallops positioned in rows so they are touching those adjacent, and positioned in rows in an offset pattern. What was left of the features alleged to be copied in this case were (i) the crescent shape of the pleated scallops; (ii) the broadly similar size of the pleated scallops; and (iii) the broadly similar spacing between horizontal rows of the pleated scallop motifs. In her judgment (iii) was really connected with (ii), as the broadly similar spacing was a feature of the broadly similar size of pleated crescent-shaped scallops placed, in a commonplace way, adjacent to each other and in an offset pattern.

Having considered those matters carefully, Her Honour did not find that those similarities were sufficiently close, numerous or extensive to be more likely the result of copying than coincidence. She declined to draw an inference of copying from them. Taking account of the differences which were extensive and material, she considered that they indicated an independent source and so rebutted any inference of copying.

That was enough to dispose of the case, but the judge added at paragraph [85] that had she been persuaded that the similarities were sufficiently close, numerous or extensive to be more likely the result of copying than coincidence, she would have accepted the evidence of independent design.

Between paragraphs [28] and [32] of her judgment, Her Honour recited CPR 35.3, paragraphs 2 and 3 and the Introduction to the Part 35 Practice Direction.  She also mentioned the Civil Justice Council's Guidance for the instruction of experts in civil claims and quoted the following paragraphs:

"9. Experts always owe a duty to exercise reasonable care and skill to those instructing them, and to comply with any relevant professional code. However when they are instructed to give or prepare evidence for civil proceedings they have an overriding duty to help the court on matters within their expertise (CPR 35.3). This duty overrides any obligation to the person instructing or paying them. Experts must not serve the exclusive interest of those who retain them."

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"11. Experts must provide opinions that are independent, regardless of the pressures of litigation. A useful test of independence is that the expert would express the same opinion if given the same instructions by another party. Experts should not take it upon themselves to promote the point of view of the party instructing them or engage in the role of advocates or mediators."

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"13. Experts should take into account all material facts before them. Their reports should set out those facts and any literature or material on which they have relied in forming their opinions…"

The claimant's expert had dentified the similarities between the Evangeline and  Amore in the text of his report but had underplated the differences by confining them to the diagrams.  

The judge said at paragraph [40]:

"I should make clear that I do not doubt Mr Herbert's bona fides or professionalism. I believe that he came to court to express his honestly held opinion about the case. However he came to it initially in a role which specifically required him not to approach his assessment objectively and impartially (and I do not criticise him for this – he was specifically hired to produce advice to support Ashley Wilde's case) and did not amend his approach when his role changed to that of an expert with the duty to be independent, objective and impartial. That is where, I fear, he went wrong, and I consider that he has, perhaps without realising it, maintained a partial approach which has caused him to identify too closely with his client's case. In my judgment this can be seen in his report. An example is seen at paragraph 8 where he states "…the arrangement of the crescent motifs is the same on both [the Evangeline Duvet Cover and the Amore Products]:- 3, 2 and 1 albeit the Defendants have added extras across the width". This is a very odd way of saying that the Evangeline Duvet Cover has 6 pleated scallops in three rows arranged 3, 2, 1 and the Amore Products have 10 full and 4 half scallops arranged 3, 4, 3 with half scallops at each end of the top and bottom rows. In my judgment it shows a lack of objectivity and impartiality."

She emphasized that the court requires independence, objectivity and impartiality of experts so that it can trust as reliable the opinions which, as experts, they are uniquely permitted to offer.  The manner in which the claimant had approached the production of his expert report meant that she could not accept that his opinions were reliable,  That was because the opinions he had offered the court were the same as when he was carrying out a purely partisan exercise to support the claimant's case. He had not addressed the differences and shown the court why they did not affect that initial assessment, as the Guidance required him to do.  Accordingly, Her Honour could not place any weight on the expert's opinions though she did accept his measurements and factual observations.

Anyone wishing to discuss this article, copyright or the role of experts in intellectual property cases, in general, may call me on 020 7404 5252 during office hours, or send me a message through my contact form.