In Ashley Wilde Group Ltd v BCPL Ltd [2019] EWHC 3166 (IPEC)   HHJ Melissa Clarke considered, and was critical of, the way in which an expert was instructed.  The difficulty was that the appointed expert moved from “hired gun” hired with the aim of finding the similarities in a design, to an expert reporting to the court.  The very way in which the expert was instructed led the court to reject that expert’s evidence.

The court requires independence, objectivity and impartiality of CPR part 35 experts so that it can trust as reliable the opinions which, as experts, they are uniquely permitted to offer to the court”


The case was a copyright dispute in relation to celebrity bedding ranges. One was designed by Kylie Minogue.  Both sides called experts.  The judge considered the way in which the expert was instructed.


    1. I also heard evidence from two experts in textile design.
    2. For Ashley Wilde I heard from Mr Victor Alan Herbert, a design consultant with extensive experience in textiles and clothing design over more than forty years. He has acted as an expert witness in over fifty design right and copyright cases. His report is dated 8 February 2019.
    3. For BCPL I heard from Professor Tom Cassidy, the Chair of Design at the University of Leeds, who has fifty years experience working in the textile and design industry and as an academic in the textile and design field. His academic work includes lecturing on intellectual property rights to design and textiles students at undergraduate and postgraduate levels. He has acted as an expert before but I understand this may have been the first case in which he was required to give evidence as an expert in court. His report is dated 15 April 2019.
    4. I am satisfied that both experts have the experience and expertise to offer their opinions on textile design to assist to the court. There was no joint meeting of experts and there is no joint statement of areas of agreement and disagreement.
    5. Although not called to give oral evidence at trial, I have also read a witness statement of Mr Anthony Catterall, a solicitor acting for Ashley Wilde, which deals with the circumstances in which Mr Herbert was instructed to act as an expert for Ashley Wilde in this case. This was prepared for the purposes of supporting an application, dated 8 February 2018, to adduce an expert report from Mr Herbert. BCPL consented to that application, which resulted in the vacation and relisting of the trial originally listed on 12 March 2019.
    1. Pursuant to CPR 35.3, an expert’s overriding duty is to the court:
“(1) It is the duty of experts to help the court on matters within their expertise.
(2) This duty overrides any obligation to the person from whom experts have received instructions or by whom they are paid.”
    1. The Practice Direction to CPR Part 35 (“PD35“) sets out the following general requirements of an expert:
“2.1 Expert evidence should be the independent product of the expert uninfluenced by the pressures of litigation
2.2 Experts should assist the court by providing objective, unbiased opinions on matters within their expertise, and should not assume the role of an advocate.
2.3 Experts should consider all material facts, including those which might detract from their opinions.”
    1. Guidance as to the form and contents of an expert report is found in paragraph 3 of PD35:
“3.1 An expert’s report should be addressed to the court and not to the party from whom the expert has received instructions
3.2 An expert’s report must:
(1) give details of the expert’s qualifications;
(2) give details of any literature or other material which has been relied on in making the report;
(3) contain a statement setting out the substance of all facts and instructions which are material to the opinions expressed in the report or upon which those opinions are based;
(4) make clear which of the facts stated in the report are within the expert’s own knowledge;
(5) say who carried out any examination, measurement, test or experiment which the expert has used for the report, give the qualifications of that person, and say whether or not the test or experiment has been carried out under the expert’s supervision;
(9) contain a statement that the expert –
a) understands their duty to the court, and has complied with that duty; and
b) is aware of the requirements of Part 35, this practice direction and the Guidance for the Instruction of Experts in Civil Claims 2014.”
    1. Paragraph 1 to PD35 provides that “Experts and those instructing them are expected to have regard to the guidance contained in the Guidance for the Instruction of Experts in Civil Claims 2014 at” (my emphasis). That Guidance sets out very clearly the circumstances when the Guidance applies (when an expert is appointed pursuant to Part 35) and when it does not (when an expert advises before proceedings are started which the parties do not intend to rely on in litigation, or where after commencement of proceedings the expert is only instructed to advise and not prepare evidence for the proceedings, when the expert’s role is that of an expert advisor). At paragraph 7, it is explicit that: “…this guidance does apply if experts who were formerly instructed only to advise, are later instructed as an expert witness to prepare or give evidence in the proceedings” (my emphasis).
    2. The Guidance includes the following sections of particular relevance to this case:
“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.”
“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.”
“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…”
Mr Herbert
    1. Ms Edwards-Stuart submits, and I accept, that there are significant difficulties with the way in which Mr Herbert’s expert report was prepared. Mr Catterall’s witness statement provides the background. HHJ Hacon made no direction permitting expert evidence at the original CMC, but after reading the witness evidence which was served in November 2018, Mr Catterall had a meeting with his clients. He said “I recommended to the Claimant that it would be appropriate to ask for an opinion from an independent expert who could review the respective products and provide an opinion on the similarities between the designs and on the question whether the Defendant’s “Amore” product was manufactured from the Cad design purporting to represent the Defendant’s artwork” (my emphasis). His clients agreed.
    2. On 21 December 2018 he sent instructions for an expert opinion to Mr Herbert, which are in the bundle. As Mr Catterall correctly identified in his witness statement, and as can be seen on the face of those instructions, they asked Mr Herbert to identify evidence supporting Ashley Wilde’s case. Mr Herbert confirmed in cross-examination that he was only asked to look at similarities which were supportive of Ashley Wilde’s case of copying, and not differences which might undermine that case and/or support BCPL’s case of independent design.
    3. Mr Herbert produced that initial opinion, and then at the end of January he met with Mr Catterall, clients and counsel at a round table meeting to discuss it. That prompted Ashley Wilde’s application of 8 February 2019 to be permitted to adduce expert evidence.
    4. In cross-examination, Mr Herbert confirmed he turned his informal opinion into a formal expert’s report, which is the report I have before me. He put the same findings from his informal opinion into his formal report. He said that he was not asked to look at any differences between the two designs or carry out any additional measurements. However, he said he had already done a forensic job on measurements for the informal opinion, and had taken many more measurements than appeared in it or the report, so additional measurements were not necessary. There was then the following exchange:
Ms Edwards-Stuart: I understand, so how did you decide which measurements to put in the report?
Mr Herbert: Just the ones that seemed relevant to narrow it down to those elements which I thought contributed to the – – what I might assume were similarities, and I also understand very clearly what the differences are also.
Q: But you haven’t identified any of those differences in your report?
A: They are hidden within the report in the diagrams because I measured everything, and those, despite what was said, those measurements are included in the accurate drawings which I did, so I had to measure them, yes.
Q: So if I want to find the differences I will have to go through your diagrams but if I want to find the similarities I can look for those in your report?
A: The differences are paramountly obvious.
Q: Well, the differences are paramountly obvious, I agree, but what I’m trying to explore with you is what material you have chosen to contain in the language of your report and I understand you to be confirming that you just focus on the similarities.
A: No, I didn’t just focus on that. I was well aware of the differences.
Q: But you don’t report any in your report?
A: If the diagrams are part of the report they were reported.
    1. Ms Edwards-Stuart described reference to “hiding the differences in the report” as “unsatisfactory”, and I agree.
    2. I accept her submission that Mr Herbert should have recognised the difficulties of moving from a role in which he was specifically asked to identify evidence which supported Ashley Wilde’s case, to a role as a court-appointed independent expert with requirements of impartiality and objectivity, and either started his analysis afresh, or at the very least highlighted the differences between the Amore Products and the Evangeline Duvet Cover as well as the similarities, and reconsidered his opinions objectively and fairly in the light of those differences. That would have established his compliance with his duties to the court pursuant to CPR part 35 and also established that he had complied with the Guidance, particularly the obligation in paragraph 13 to take into account all material facts. It is surprising that he did not do so given his undoubtedly extensive experience as an expert witness. Ms Edwards-Stuart submits that those instructing Mr Herbert should also take some responsibility, as they too have obligations to comply with the Guidance. I accept that submission.
    3. Mr Smith submits that Mr Herbert was a satisfactory witness, and asks me to take into account that the exercise in establishing copyright infringement is in identifying similarities. He submits that Ms Edwards-Stuart put to Mr Herbert no differences which would have made a difference to his assessment. I do not accept this submission. Differences between the designs are material facts, and have relevance when considering there an inference of copying has been rebutted in the first stage of the assessment of copying, as Lord Millett made clear in Designers Guild. As material facts, Mr Herbert undoubtedly should have taken them into account. Mr Herbert stated in oral evidence that he believed he had complied with the requirements set out in paragraph 2.2 of CPR part 35, but I am not satisfied that he has.
    4. 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.
    5. The court requires independence, objectivity and impartiality of CPR part 35 experts so that it can trust as reliable the opinions which, as experts, they are uniquely permitted to offer to the court. That does not mean that the court has to accept those opinions, and of course there can be a range of opinions offered by independent, objective and impartial experts. The manner in which Mr Herbert has approached the production of his expert report means that I cannot accept that his opinions are reliable, as the opinions he offers now are the same as the opinions he reached when he was carrying out a purely partisan exercise to support Ashley Wilde’s case, and he has not addressed the differences and shown the court why they do not affect that initial assessment, as the Guidance requires him to do.
    6. In my judgment, for those reasons, I cannot place any weight upon the opinions that Mr Herbert expresses in his reports, although I do not doubt the factual accuracy of his measurements and observations.
Mr Cassidy
  1. Mr Smith criticises Mr Cassidy, saying that his report was inadequate because he did not comply with CPR part 35 paragraph 3.2(v), as although he identified in his report that various examinations, measurements, and experiments set out were carried out by members of his team and not him personally, he does not identify the specific team member(s), does not give the qualifications of those persons, and does not state whether or not that work was carried out under his own supervision. Mr Cassidy accepted in cross-examination that he did not, but stated that they were all trusted members of his department, with at least undergraduate degrees, and he was present and supervised then them when they carried out the tasks he describes in his report. Ms Edwards-Stuart submits that it is not clear what relevant qualifications he could provide in the context of carrying out measurements by ruler, which does not require technical expertise to carry them out, and that it was not suggested to Mr Cassidy that any of the measurements were incorrect. She described it as a criticism without any bite. I accept her submissions. I find Mr Cassidy’s evidence to be of assistance to the court.
  2. Mr Herbert’s opinion at paragraph 16 of his report is that the Amore Products are a copy of the Evangeline Duvet Cover, made up of pleated scalloped elements directly copied from a pleated scalloped element of the Evangeline Duvet cover using either a photocopier or scanning device, but scaled down somewhat in size. He opines that “Clearly, the Defendant’s Amore duvet cover is of inferior quality to the Claimant’s Evangeline”. In his opinion “the similarities to ‘Evangeline’ in the construction of the ‘Amore’ product that I have identified, coupled with its inferior quality, all point to ‘Amore’ being a cheaper copy of ‘Evangeline'” (para 18).
  3. Another example is in paragraph 15, where he acknowledges that the Amore Products have fewer pleats per scallop than in the Evangeline Duvet Cover, but states “I believe that the arrangement of only 18 pleats on the Defendant’s duvet was arrived at by filling in the appropriate number of pleats to make the Claimant’s Evangeline’s 10 pleats”. It is very difficult to understand what he means by this, and there is no evidence to support this supposition.
  4. For those reasons I prefer the evidence of Professor Cassidy. His report is, in my view, more rigorous. Professor Cassidy has checked the measurements and figures provided by Mr Herbert to support his opinion that the Amore Products copy the Evangeline Duvet Cover, and has found many of them inaccurate when compared with his cover, but I bear in mind they were not using the same samples and there are inevitably differences arising from manufacture.