LITIGATION IN THE INTELLECTUAL PROPERTY ENTERPRISE COURT: A TALE OF TWO DRESSES
The transcripts of cases in the Intellectual Property Enterprise Courts are often challenging reading. They regularly contain technical material which is difficult for the non-specialist to follow. However the case of John Kaldor Fabricmaker UK Ltd -v- Lee Ann Fashions Limited  EWHC 3779 (IPEC) is an interesting example of the IPEC at work. The case came down, simply, to one issue – whether a witness was believed. What is interesting is the economical and sensible way in which the issues appear to have been crystallised and the trial consequently conducted.
The claimant alleged that the pattern in a dress produced by the defendant had been copied from a design produced by the claimant.
THE APPROACH OF THE IPEC
The first part of the judgment of H.H. Judge Hacon sets out the approach of the IPEC to procedural issues.
CPR 63 PD 29.2(2)
- 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.
- 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. To a degree the procedure in the IPEC allows the court to weed out points that are likely to be a waste of time by the application of CPR 63 PD 29.2(2) at the CMC. However it is not always possible for the court at that stage to recognise that a point fails the cost-benefit test. Parties are encouraged to make submissions at the CMC as to whether points taken by the opposing side satisfy the cost-benefit test, where that test properly arises. There is then a greater likelihood that arguments being run and which deserve to fail the test will not be pursued.
THE ISSUE OF EVIDENCE: WAS THE DRESS COPIED?
The case was, simply, a matter of fact. Did the defendant’s designer copy the claimant’s pattern? It was a matter of the judge analysing the evidence and assessing the facts.
38.John Kaldor’s witnesses who were cross-examined were Nick Ciccone, Design Manager at John Kaldor, who gave evidence about John Kaldor’s suggested design corpus, and Ms Haykiran. I found them both to be straightforward witnesses.
39. On Lee Ann’s side Sukhbir Johal, who is Lee Ann’s Managing Director, gave evidence, primarily about Lee Ann’s rival selection of 10 items to represent the design corpus. He also was a straightforward witness. The other from Lee Ann was Mrs Vance, who was a key witness. Mrs Vance gave her evidence quietly and carefully. She conceded inaccuracies in her evidence regarding matters such as style numbers, but otherwise in cross-examination maintained her evidence of having created the design of the LA Fabric on 27 September 2012 independently both of any sight of the JK Fabric and any input from Ms Cook aside from Ms Cook’s instruction that ‘tribal print’ was to be the key to John Kaldor’s approach to the Marks & Spencer brief.
The evidence of independent design
40.I have set out in summary above Lee Ann’s case on how Mrs Vance came to design the LA Fabric independently of the JK fabric. That account seems to me to be credible on its face. The real issue under the present head is whether there was sufficient evidence for me to disbelieve that account and Mrs Vance in particular.
Access to the JK fabric
41.Lee Ann did not dispute that Mrs Vance could have seen the JK fabric. It appears that a dress was made up using a 4 metre sample of the fabric supplied to Lee Ann and that it was shown to Marks & Spencer. The dress is referred to in an email dated 25 September 2012 from Ms Price to Ms Haykiran. It was not clear what became of the dress and any leftover fabric, if there was any to speak of. I am satisfied that it was possible for Mrs Vance to have seen the JK Fabric, though there is no direct evidence in support of John Kaldor’s case that she saw it and singled it out from the other 21 fabrics supplied on 8 and 9 August 2012. Mrs Vance said she had no recollection of seeing the dress or JK Fabric.
The first colourway created by Mrs Vance
42. Ms Edwards-Stuart alleged that the first colourway of the design created by Mrs Vance used the same palette as the JK Fabric and argued that this can only have been because Mrs Vance had the JK Fabric in mind. This sort of argument is difficult to run because necessarily it must be done by reference to photocopied images with colours that may not be accurate. It is not self-evident that the first colourway is the same as the colours of the JK Fabric. The point was put to Mrs Vance who said that there was only a slight similarity in colours, her choice being pinker.
Phone call between Ms Haykiran and Ms Price
43. John Kaldor alleged that on 19 February 2013, after John Kaldor had become aware of the dress shown in Annex 2, Ms Haykiran phoned Ms Price of Lee Ann to discuss the matter. It was said that in the course of this call Ms Price admitted that Lee Ann had “re-worked” the JK Fabric to create the LA Fabric. This allegation is set out in paragraph 6(9) of the Particulars of Claim. It is denied in paragraph 12 of the Amended Defence, which states an understanding on Lee Ann’s part that “Miss Price will say that she made no such statement”. The statement of truth at the end of the Amended Defence is signed by Sukhbir Johal, managing director of Lee Ann. In cross-examination Mr Johal said that the understanding of Ms Price’s position came from a conversation with her. However Ms Price herself did not give evidence.
44. In cross-examination Ms Haykiran admitted that during the phone call relied on Ms Price may not have known which fabric Ms Haykiran was talking about. Ms Haykiran referred to a second phone call and said that Ms Price would have known by then. This was not explored. The date on which this second phone call took place was not identified, nor was it clarified why Ms Price must have realised which fabric Ms Haykiran was referring to by that time. Finally, assuming Ms Price was clear on the second occasion that Ms Haykiran was talking about John Kaldor’s JK Fabric, Ms Haykiran did not say whether Ms Price still maintained that this fabric had been re-worked. Ms Haykiran conceded in cross-examination that she had no knowledge as to whether Ms Price was familiar with what Mrs Vance had done in the creation of the LA Fabric, but I give this no weight.
45. I do not think that Ms Haykiran was inventing this aspect or any other part of her evidence. On the other hand, there are uncertainties surrounding what happened and whether Ms Haykiran’s current understanding of what Ms Price must have meant is accurate. The uncertainties are enough for me, on balance, to reject John Kaldor’s contention that Ms Haykiran’s account of what became two phone calls with Ms Price was powerful evidence of copying by Mrs Vance. I do not believe that I can place great reliance on it.
No evidence from Ms Price, Ms Cook or the designer
46. The court did not have the benefit of evidence from Ms Price, as I have already mentioned, nor from Ms Cook or the other individual, a Lee Ann designer, who gave Mrs Vance her instructions on 27 September 2012. Ms Edwards-Stuart invited me to draw adverse inferences from this. I do not do so. Ms Price aside, it is not clear that the other witnesses would have added anything and in the IPEC the number of witnesses must be kept to a minimum. The most that can be said is that their absence left John Kaldor’s evidence, particularly that of Ms Haykiran, to be all there was to go on.
Errors in Mrs Vance’s evidence
47. In cross-examination Mrs Vance was forced to accept that her evidence contained errors regarding dates, design numbers, the time she had been at Lee Ann and the approval process for designs. But these were all peripheral points. The most that be said is that Mrs Vance did not always have a sense of precision in relation to her explanation of such matters. She freely accepted correction in cross-examination. In my view these errors did not bring into real doubt the more central aspects of Mrs Vance’s evidence.
Conclusion on independent design
48. 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.
49. I conclude and find that Mrs Vance did not copy the JK Fabric when she created the LA Fabric.
JUDGE FOR YOURSELF
One interesting thing about the IPEC transcripts is that they often have photographs and diagrams of the designs involved. (See Annex a and 2 of the judgment).
COMPARE AND CONTRAST
It is interesting to compare this case to observations of Lightman J tin Evans -v- SMG Television Ltd  EWHC Civ 1423 (Ch) and the end of that judgment he observed
“287. I feel impelled to conclude this judgment with a comment on the ever-increasing cost and complication of legal proceedings vividly exemplified in this case. The only real issues in this case are short and simple, namely whether the conduct of Mr Evans was such that the defendants could no longer reasonably continue his engagement as star presenter of the Show and whether his conduct was damaging to Virgin Radio and SMG Jersey. To a layman these issues would appear to be of limited compass and capable of speedy and economic resolution. But they have for their resolution occasioned mammoth litigation and a 20-day trial at a horrendous cost to the parties. In an effort to save at least part of this cost, when this case first came before me on a case management conference a few days before the date fixed for the trial (far too late for an effective and cost saving exercise of case management powers) I ordered the parties to seek a solution through mediation, but this proved unsuccessful. The lateness of the attempt and the costs already incurred by both sides on the litigation may well have been a factor in the failure of the attempt. At the trial I was faced (as is the lot of trial judges today) with some 30 (frequently very lengthy) witness statements from the witnesses of fact, expert reports on both sides in four distinct disciplines, and over 50 (largely unread) heavy and tightly packed volumes of documents. Such “overkill” is the bane of modern day litigation. The overriding objective of the Civil Procedure Rules of conducting litigation in a way which saves expense (ie economically) has yet to find its full reflection in litigation practice. In the vain hope of cutting the case down to manageable proportions I suggested that little (if any) more was required to determine this case than to hear the cross-examination and re-examination of Mr Evans. Such an abbreviation of the trial (no doubt for good reasons) was not adopted. At the close of the case it is clear that Mr Evans’s evidence under cross-examination effectively decided the outcome of the litigation and Mr Vos in his final submissions acknowledged that this was so. This trial underlines the urgent need for a more economic and affordable trial process. Large trials are becoming increasingly unmanageable and unaffordable. This is very much a case in point.”
It appears that IPEC may have, at the very least, started to achieve that process.
THE GUIDE TO IPEC
The Guide to IPEC procedure is available here