Eskandar Nabavi Eskandar Limited v Shirin Guild [2002] EWCA Civ 316

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
ON APPEAL FROM MR. JUSTICE RIMER
CHANCERY DIVISION
[2002] EWCA Civ 316Case No Case No: A3/2001/0649Venue Royal Courts of Justice, Strand,, London, WC2A 2LL, Thursday 14th March 2002
Between
Eskandar Nabavi Eskandar LimitedAppellantsShirin GuildRespondent
Before
Lord Justice Robert WalkerLord Justice RixMr. Kevin Garnett QC and Mr. Gwilym Harbottle (instructed by Messrs Withers) for the AppellantMiss Denise McFarland (instructed by Messrs D J Freeman ) for the RespondentsDate 14 March 2002
[1]The Vice-Chancellor : Introduction In 1997 the respondent, Mrs Guild, instituted these proceedings against the appellant, Mr Nabavi (and his one-man company to which I shall make no further separate reference). She claimed that he had infringed her copyright and design right in respect of a sweater, a cardigan and a shirt. She sought injunctions, damages or an account of profits and delivery up of infringing copies.[2]Mrs Guild's claims were based on her allegation, in the case of each garment, that in the summer 1991 she created an original design recorded at that time in an original sketch to which the respective garments were subsequently made. Mrs Guild alleged that Mr Nabavi knew of her designs from having worked for her from November 1991 to August 1992 in, amongst other matters, the production of samples of each of the three garments. She alleged that from and after December 1996 Mr Nabavi infringed both her copyright and her design right by making and selling similar garments.[3]Mr Nabavi contested these allegations. He denied that Mrs Guild had made the drawings she claimed. He asserted that the designs arose in November 1991 from copying a sweater, originally made by a designer called Romeo Gigli, a mistaken measurement in the making of a sample and a few insignificant alterations. He claimed that in those circumstances Mrs Guild was unable to establish either of the rights she claimed. He agreed that from September 1991 he had had a business association with Mrs Guild until August 1992 when their partnership, which had commenced in February 1992, was dissolved. He accepted that he had made the garments of which Mrs Guild complained but denied that in doing so he had copied any garment or drawing of hers. Mr Nabavi counterclaimed pursuant to s.253 Copyright, Designs and Patents Act 1988 ("CDPA") for injunctions to restrain Mrs Guild from making groundless allegations of infringement.[4]Judgment in the action was given by Rimer J on 2nd February 2001. He rejected the claims of Mrs Guild to have created and drawn the designs in the summer of 1991. He accepted the evidence of Mr Nabavi that the design for garments subsequently made for Mrs Guild arose from copying the sweater made by Mr Gigli and making some alterations to it. He concluded that the alterations were made by Mrs Guild and involved sufficient skill and labour to give rise to original designs for the garments within s.213(1) CDPA 1988. He decided that such designs were not works of artistic craftsmanship, so that the copyright claim failed, but that they were not commonplace either so that the claim to design right succeeded.[5]At the trial Mrs Guild was unable to produce any garment made to those designs in 1991 or immediately thereafter. Rimer J concluded that the best evidence of such designs were the garments produced by Mrs Guild in 1996 and subsequent years. He found that in those years Mr Nabavi had produced garments substantially to Mrs Guild's designs, thereby infringing her design rights.[6]This is the appeal of Mr Nabavi, brought with the permission of the judge, from the order of Rimer J made on 22nd February 2001. Mr Nabavi contends that the judge was wrong to have concluded that the best evidence of Mrs Guild's designs were the garments produced by her in 1996 and following years. He submits that the judge was also wrong to have concluded that Mrs Guild had created any original design, that Mr Nabavi had copied it or, if such copying had taken place, that the garments produced by Mr Nabavi were made "substantially" to Mrs Guild's designs. He does not challenge the judge's conclusion that the designs were not commonplace. Mrs Guild contends that Rimer J was right for the reasons he gave, in particular she accepts the judge's decision dismissing her copyright claim.[7]In summary, Mr Nabavi submits that a careful reading of the long and detailed judgment shows that the judge's conclusions are not justified by the facts he found and are, in several instances, mutually inconsistent. Thus, on that basis, the issues for the determination of this court are: a) whether the designs, as found by the judge, were both(i) created by Mrs Guild and(ii) original, and if so b) whether Mr Nabavi copied those designs, and if so c) whether the extent of the copying was such that the garments of Mr Nabavi were made "substantially" to Mrs Guild's designs. I will deal with those issues in due course; but, first, it is necessary to set out the statutory provisions relating to design right and to describe the facts in a good deal more detail. I shall, so far as possible, do so by reference to the judge's findings. Quotations from his judgment are followed by the number of the paragraph from which they are taken. The statutory provisions[8]Design right is a new, wholly statutory right introduced by CDPA. It is defined in s. 213, the material provisions of which are as follows:
"(1) Design right is a property right which subsists in accordance with this Part in an original design. (2) In this Part "design" means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article. (3) [exceptions for methods or principles of construction, matters arising from connection to or dependence on another article and surface decoration] (4) A design is not "original" for the purposes of this Part if it is commonplace in the design field in question at the time of its creation. (5) [territorial limits] (6) Design right does not subsist unless and until the design has been recorded in a design document or an article has been made to the design. (7) Design right does not subsist in a design which was so recorded, or to which an article was made, before the commencement of this Part."
[9]As I have already recorded, the judge decided that the claimant's designs were not 'commonplace' and there is no appeal from that conclusion. S.216 provides for design right to expire fifteen years after the design was first recorded in documentary form, or an article was first made to the design, unless articles made to the design were marketed within five years. In that case the design right expires ten years after the end of the year in which they were first marketed. S.237 provides for licences as of right during the last five years of the term.[10]Primary infringement of design right is defined by s. 226, the material provisions of which are as follows:
"(1) The owner of design right in a design has the exclusive right to reproduce the design for commercial purposes – (a) by making articles to that design, or (b) by making a design document recording the design for the purpose of enabling such articles to be made. (2) Reproduction of a design by making articles to the design means copying the design so as to produce articles exactly or substantially to that design, and references in this Part to making articles to a design shall be construed accordingly. (3) Design right is infringed by a person who without the licence of the design right owner does, or authorises another to do, anything which by virtue of this section is the exclusive right of the design right owner."
[11]The crucial words in subsection (2) (" ... copying the design so as to produce articles exactly or substantially to that design ...") are to be contrasted with the corresponding words in s.16(3) dealing with copyright infringement (copying "the work as a whole or any substantial part of it").[12]S. 236 covers any work in which both copyright and design right subsist. In such a case any copyright infringement excludes any design right infringement. Section 253 gives a remedy for groundless threats of proceedings for design right infringement, similar to that in section 70 of the Patents Act 1977. Section 253 was the basis of Mr Nabavi's counterclaim which the judge dismissed.[13]The construction and effect of section 213 has been considered by this court in Farmers Build Ltd v Carier Bulk Materials Handling Ltd [1999] RPC 461 . That case establishes that the requirement of originality in section 213(1) is to be understood in the same sense as the corresponding requirements (for copyright in an artistic work) in section 1(1)(a), subject to the separate but overlapping provision which excludes commonplace designs.The authorities as to originality for copyright purposes were fully reviewed by the Privy Council, on an appeal from Hong Kong, in Interlego AG v Tyco Industries Inc [1989] AC 217 , 259-63. The test is not a demanding one. It does not require the work to be "the expression of original or inventive thought" (University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601, 608). But "it must originate with the author and not be copied from another work" (British Northrop Ltd v Texteam Blackburn Ltd [1974] RPC 57, 68). The Facts[14]Both Mrs Guild and Mr Nabavi were born in Tehran, she in 1946, he in 1963. In due course each of them came to London and has lived here since, in her case, 1985, and, in his case, 1979.[15]The judge described in some detail Mrs Guild's early interest in fashion and fabrics. She was much influenced by ethnic and peasant dress. She attended the Central St Martins School of Art in London. There she was encouraged by her lecturer to manufacture her own designs. As the lecturer, Mrs Rosenthal, recalled "Mrs Guild drew her inspiration from her Iranian background and ethnic peasant clothing, and recalled that Mrs Guild had shown her examples of peasant Iranian dress, which were of the like flat and "geometric" shapes that were to become the main feature of Mrs Guild's designs. These were based on simple shapes, often squares, that were flat and symmetrical when laid out, but when worn would drape and flow with a grace and fluidity the like of which Miss Rosenthal said she had never seen in the marketplace before. They were untailored and unstructured." [7][16]Mrs Guild became acquainted with Mrs Belinda Robertson, a designer and contract manufacturer of cashmere knitwear in 1988. The judge heard evidence from some for whom, in the period 1987 to 1989, Mrs Guild designed clothes. Mrs Guild first met Mr Nabavi in the spring of 1991.[17]Mr Nabavi's interest lies in the creative field, be it photography, needlepoint, painting or interior decoration. He has been designing knitwear since 1987. Rimer J recorded that "He bought a knitting machine and worked from his parents' house. He was at that time inspired by designs for Persian carpets and oversize clothes. He had seen such clothes daily during his childhood in Iran as well as the oversize designs by Joseph. He said that in about 1989 he started making sweaters both with a plain design and with floral or Persian carpet designs, which he sold to Liberty and Harrods in the winter of 1990. He also sold cashmere sweaters and handknits. He had not by then developed a specific direction as a designer and was always having new ideas. His aim was to make knitwear that was easy to wear, elegant and interesting." [32][18]Mr Nabavi carried on his business from premises at 134 Lots Road, London. He was assisted by his mother and, in the summer of 1991, by a part time assistant Ms Toft. The judge found that "Mr Nabavi had already designed and was making garments of a wide, square design, with widths of up to 100 cm, before he met Mrs Guild. The upper line of their sleeves follows the shoulder line, with the lower line slanting up to the cuff." [132][19]The first meeting of Mrs Guild and Mr Nabavi, which took place on 21st March 1991, was social. They discussed matters of mutual interest and agreed to meet again to consider further a suggestion that Mr Nabavi might take care of the knitwear part of Mrs Guild's proposed collection.[20]The second meeting took place at Mr Nabavi's premises at Lots Road on 18th September 1991. Rimer J recorded Mrs Guild's evidence with regard to this meeting in the following terms: "Mrs Guild said in chief that she also took with her to Lots Road a cut and sew jersey garment resembling the one she had earlier shown Mrs Robertson. She denied in chief that any of those garments bore any relation to the garments she was proposing to produce, but I interpret her as referring only to what she was wearing, not to the cut and sew garment. She said in chief that she left that garment and also some drawings with Mr Nabavi and asked him if he could work with these garments and he said he could. She says they talked about producing long and short versions of her cross over V-neck sweater and cardigans in alpaca and linen." [54] But the judge held that "...by the time of the meeting of 18 September 1991 Mrs Guild had not created any drawings for her proposed garments, and nor was I satisfied by her evidence that any cut and sew oatmeal sweater then existed, or at least I do not accept her evidence that she ever produced it to Mr Nabavi. He denied that she produced any such garment at their meetings in September and November 1991, and I accept his evidence on this.." [136][21]A further meeting between Mrs Guild and Mr Nabavi took place at 134 Lots Road on 7th November 1991. The judge was faced with an acute conflict of evidence as to what occurred at this meeting. It is clear that Mrs Guild took with her to the meeting a rust coloured sweater designed by Mr Romeo Gigli ("the Gigli Sweater"). By reference to that garment Mrs Guild demonstrated to Mr Nabavi the style of garment in which she was interested; it was to form the basic model for the wide square shaped design she wanted to achieve. The judge reached no express conclusions on the contentions of Mr Nabavi that the Gigli sweater was laid out on the floor and measured.[22]The shape and configuration of the Gigli Sweater is important. The conclusion of the judge was that it was approximately 88 cm wide, of a square shape with a round collar and with ribbing on the cuffs and along the bottom.[23]The outcome of the meeting on 7th November was that Mr Nabavi was to visit Havelock Knitting (Grimsby) Ltd ("Havelock") for them to manufacture sample garments in alpaca wool, including both a long and short sweater and a long and short cardigan. At the end of November, the night before Mr Nabavi was to visit Havelock, Mrs Guild produced to Mr Nabavi some drawings, disclosed in the proceedings by Mr Nabavi and produced in evidence at the trial. The judge described the drawings as a bit of a mystery, not least because they depict the sweater with a round neck, whereas by then the plan was for a cross-over V-neck. They show(a) a long sweater, uniformly 88cm wide, 74cm long, with measurements for arms, cuffs and rib,(b) a short sweater of the same design, 52cm long;(c) a long cardigan, 100cm wide under the arms, tapering to 88cm at the hem, 80cm long, with measurements for the neck and arms, and(d) a short cardigan of the same design, 52cm long.[24]Mr Nabavi visited Havelock at the end of November 1991. He took with him the drawings and the Gigli sweater. At some stage the collar of the sweater was changed from a round-neck collar to a cross-over V-neck. As the judge found "In the event, Havelock produced a V-neck sweater uniformly about 100 cm wide, which Mr Nabavi said Mrs Guild was pleased with, which they then decided should be the standard uniform width for both sweater and cardigan. There is of course a dispute about all this, as I have related, and there are aspects about Mr Nabavi's account of these particular events that certainly have troubled me. But, again, I prefer the essentials of his account – which was to some extent supported by the consequential measurement amendments he made to copies of the same drawings." [139] The alteration in the measurement was noted by Mr Nabavi on the drawing Mrs Guild had provided to him. The other three samples were then produced by Havelock. The judge concluded that "the core of the original design for Mrs Guild's square sweater was taken from the Gigli sweater. I find that it was the same square, 88 cm wide design. I find that the cardigan was originally intended to be of a slightly different shape, tapering from 100 cm to 88 cm. In the event, the sample sweater came out at about 100 cm wide, and it was then also decided to make the cardigan – and later the shirt – of the same square shape and dimensions. The end result was that the chosen designs were still based on the Gigli design, but were wider. The details of the garments were of course different from those of the Gigli design. In particular, the Guild sweater had a crossover V-neck, and it may well be that the other details were different (the cuffs and rib); and of course the basic – widened – Gigli shape was adapted so as to be made into a cardigan and shirt. I find that Mrs Guild did all this design work. The width of 100 cm was, I find, relatively unusual. Mr Gigli had apparently produced designs of sweaters of this width. So had Mr Nabavi." [140][25]There was an issue at the trial whether Mrs Guild and Mr Nabavi had entered into partnership and if so whether any design right to which Mrs Guild might be entitled was an asset of the partnership. Rimer J concluded that they did enter into partnership in February 1992 but that it was dissolved on 28th August 1992. He found that such design right as Mrs Guild might be entitled to was not partnership property. None of those conclusions are challenged, but it is necessary to bear in mind that Mrs Guild and Mr Nabavi were working together from end September 1991 to August 1992.[26]After the four samples, two for the sweater and two for the cardigan, had been produced by Havelock shirts to the same dimensions were produced by Mr Latronico. Four sample shirts were produced on 9th April 1992. Production of shirts did not start until after the partnership had been dissolved in August 1992.[27]Thereafter Mrs Guild and Mr Nabavi went their separate ways. Mrs Guild continued to produce sweaters, cardigans and shirts to the same basic design with, as the judge found, minor changes. Similarly, from October 1992 to October 1993 Mr Nabavi continued to produce his handknits. In the autumn/winter 1993/94 he produced a cashmere collection. In the summer 1994 Mr Nabavi produced his first shirt. He continued in autumn/winter 1994/95 to 1997/98 with wide-ranging collections of garments. The judge noted that the garments in these collections included, but were not limited to, garments of 100cm width.[28]On 3rd April 1994 Mrs Guild wrote to Mr Nabavi complaining that he was copying her knitwear designs. Mr Nabavi did not answer. Mrs Guild took the matter no further, until, on 25th February 1997, her solicitors wrote to Mr Nabavi again claiming that he was copying her garments. The writ in the action was issued on 29th September 1997. The claims of Mrs Guild[29]In paragraphs 3, 6 and 10 of her re-amended statement of claim Mrs Guild averred that "In about summer 1991 she created an original design for [a shirt referred to as the "Big Square Shirt"][a Cardigan][a Jumper]. The said design was recorded at the time in an original sketch drawn by [Mrs Guild]. In the premises, [Mrs Guild] is the owner of the copyright and/or design right which subsists in the said sketch and in the said design." She then alleged the manufacture of garments to such designs and claimed the manufacturing specification or article produced in consequence as records of the design in which she was entitled to the copyright or design right. These allegations were repeated in her witness statement.[30]As I have already pointed out (para 20 above) these allegations were rejected by the judge. It follows that the case against Mr Nabavi, as formulated in the pleadings, had failed. The judge could, and some might say should, have dismissed the action without further ado. He did not do so and the appeal to this court was not argued on the basis that he was wrong in that respect. But one consequence, as the judge recognised, was the "difficulty in identifying precisely what the designs are in respect of which she claims protection,..... She has not produced any of the sketches or drawings she claims existed as early as summer 1991 for all three garments. She has not satisfied me what these sketches showed, or even that any such sketches existed." [146][31]The judge then considered the various shirts, cardigans and sweaters which Mrs Guild had produced and continued "There are, therefore, elements of discrepancy, at least on the question of width – and in particular in relation to the sweaters – between such evidence as there is as to the original designs and the dimensions of the garments pleaded by Mrs Guild as having been made according to those designs. Some element of discrepancy between particular garments is, I consider, likely to be inevitable – garments such as these will be likely to vary somewhat in their precise dimensions. These matters have caused me concern as to whether Mrs Guild has proved her case. I have, however, come to the conclusion that I can, should and do find that the original designs were for garments with widths of 100 cm, that the pleaded garments should be regarded as having been made substantially in accordance with the shape and dimensions of those original designs and that those garments provide the best evidence as to those designs. I therefore accept her case that I should regard the pleaded shirts, sweaters and cardigan as having been made according to the original designs, albeit with minor variations. No suggestion was made that Mrs Guild had made any material departure from them over the years. The weight of the evidence was that her designs have remained essentially unchanged over the years." [150][32]The garments to which Rimer J referred were identified in the reamended statement of claim by reference to photographs set out in the Annexes thereto. The garments so depicted were produced in evidence at the trial. They were described by Rimer J in the following terms:(a) The sweater (garment NN) "Garment NN is a grey, crossover (right over left) V-neck sweater created by Mrs Guild for the autumn/winter season of 1997/98. It is about 89 cm wide under the arms and about 86 cm wide at the bottom. It is about 68.5 cm long at the sides and 67.5 cm long from shoulder to the bottom. Its rib is 12.5 cm wide, and its cuffs 9.5 cm long. Its sleeves are 33 cm long and taper from 23.5 cm at the armhole to 13 cm at the cuff end. The upper line of the sleeve continues that of the shoulder. The neck welt is on average 9 cm." [26](b) The shirt (garments KK and JJ) "Garment JJ is an example of Mrs Guild's shirts. It was apparently created in 1997. It is in cream viyella. The body is 101 cm wide at midpoint and 105.5 cm wide between, and at the top of, the two armhole seams. Its length varies from 71 cm at the sides to 73.5 cm from the side of the neck to the hem. The sleeves are 26.5 cm long. When the shirt is laid flat, the upper line of the sleeve is a continuation of the line of the shoulder of the shirt, but after about 10 cm it curves slightly down towards the cuff which is 5.5 cm long and about 11 cm wide. The width of the armhole is 25.5 cm, and the lower line of the sleeve slopes up towards the cuff. The sleeve is therefore markedly tapered from armhole to cuff (about 26 cm to about 11 cm). The shirt has a conventional collar, is buttoned conventionally down the front with seven buttons 10 cm apart (centre to centre), and has a hem of about 2 cm at the bottom. "Shirin Guild" appears on a label inside the collar." [17] "Garment KK is a grey linen shirt, produced by Mrs Guild for the spring/summer season of 1997. Its design is essentially the same as garment JJ. It is 100 cm wide, and its length varies from 72 cm at the sides to 74 from the side of the neck to the hem. The sleeves are 26 cm long, and the cuffs are 6 cm long. The armholes are 26.5 cm wide. It is similarly buttoned." [18](c) The cardigan (garment HH) "Garment HH is a brown cardigan produced by Mrs Guild for the autumn/winter season 1996/97. It buttons down the front with five buttons, which do up the men's way round and are 8.5 cm apart, centre to centre. It is 98.5 cm wide at the bottom and its length ranges from 75 to 77.5 cm. It has a rib 14 cm wide. Its sleeves are about 29.5 cm long, with their width of about 23.75 cm at the armhole tapering to about 11.75 cm at the end of the cuff. The cuff is 10 cm long. The upper line of the sleeve continues the shoulder line. The depth of the V from centre back neck to V opening is 27 cm and that from the centre back neck to the first button is 35.5 cm."[33]These descriptions must be compared with those depicted in the sketches to which I have referred in paragraph 23 above together with the original garments described in paragraph 24 above. The dimensions of the original garments so recorded may be summarised in tabular form as Pullover Cardigan Shirt Width 100cm 100cm 100cm Length 74 (long) 52 (short) 80 (long) 52 (Short) ? Sleeve length 35 38 ? Armhole width 22 22 22 The differences between the original designs and those described in paragraph 32 above include the following: a) the width of all three original garments was 100cm, but the width of the sweater NN was less than 90cm; b) the original sleeve lengths of the sweater and cardigan were 35 to 38cm, but in garments HH, LL and NN they ranged from 28 to 33cm; c) the sweater and cardigan were originally designed in two sizes, long (74-80cm) and short (52cm) but the sweater, cardigan and shirt were produced in three sizes short (50-55cm), medium (60-65cm) and long (70-75cm).[34]At least in the context of identifying the original designs the passage from the judgment of Rimer J I have quoted in paragraph 31 above shows that he regarded these differences between the original design and the subsequently produced garment as "minor". This is of some significance when considering the judge's conclusions on originality and copying. At this stage it is sufficient to note, first, that Mrs Guild's evidence as to how the original designs and garments were created was rejected and, second, that there were differences between the original designs and garments and those used by the judge for the purpose of comparison with garments produced by Mr Nabavi. The proper approach of an appellate court[35]It is convenient at this stage to consider certain submissions made by counsel for Mrs Guild which are relevant to more than one of the issues we have to decide. The hearing in this court is limited to "a review of the decision of the lower court". We are entitled to draw any inference of fact which we consider justified on the evidence. The appeal will be allowed where the decision of the lower court was wrong or unjust because of a serious procedural or other irregularity in the proceedings in the lower court. CPR Rule 52.11(1)(3) and (4).[36]It is not suggested that there was any procedural or other irregularity in the court below. But counsel for Mrs Guild reminded us, and I have well in mind, the limitations on the ability of an appellate court to reach different factual conclusions from those of the judge. First, we do not have the advantage the judge had of seeing and hearing the witnesses give their evidence. Thus we should not interfere with findings of primary fact unless the grounds for doing so are very clear. Benmax v Austin Motor Co. Ltd [1955] AC 370. An appellate court is freer to draw inferences from the findings of primary fact different from those of the judge. Nevertheless in cases such as this the ability of the court to do so is constrained by two further principles. First, it must bear in mind the advantage the judge had in the assistance expert witnesses may have given him in identifying relevant features of the designs. Second, where, as here, the judge has had to apply a not altogether precise legal standard to a combination of features of varying importance this court should not come to a different conclusion unless the judge is shown to have erred in principle. Designers Guild Ltd v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416 , 2423/4.[37]In the context of those propositions I should note the judge's conclusions on the credibility of the witnesses. I have already referred to some of the specific occasions when he rejected the evidence of Mrs Guild. More generally he said "I will, however, say at this stage that as between Mrs Guild and Mr Nabavi I generally regarded Mr Nabavi as the more convincing witness, and did so despite the inconsistencies in his evidence......Overall, Mrs Guild did not help herself by the fact that her evidence was generally – and in important respects – imprecise and confused; and this, together with the somewhat disordered manner in which she gave it, did not inspire me with confidence as to its reliability. By contrast, Mr Nabavi gave his evidence clearly and well, although there were some oddities about it, and some aspects which caused me serious concern as to its reliability. Overall, however, he did not in any respect leave me with feeling that he was seeking to mislead the court." [130][38]Counsel for Mrs Guild emphasised that the judge heard evidence from 30 witnesses of fact and two experts. In particular she pointed to the joint report of the experts recording their agreement that "(g) the essential elements for consideration when comparing the garments in this case are (in our opinion): Materials, fibres and trims Construction, etc The arrangement of the essential elements of the garment in relationship to each other Proportion: in clothing, the proportions are more important than precise measurements (h) The garments by [Mrs Guild] and those of [Mr Nabavi] differ in measurement (see above points re proportions) since the garments are now very creased, and there would need to be an established criteria for measurement, we do not consider it relevant to produce a further set of measurements which could/would vary the next time the garments were measured, depending on the conditions under which the measurements were taken."[39]Counsel for Mrs Guild submitted that the measured approach of counsel for Mr Nabavi to the dimensions of the various garments under consideration was at variance with the expert evidence.[40]No doubt the expert evidence when given forms part of the evidence in the case as a whole. But the order of the Master, the contexts in which the judge referred to it and the respective expert's own description of his terms of reference all show that the expert evidence was directed to the issues of artistic craftsmanship and whether the designs were commonplace, neither of which is live before us. In any event a change of substance in one measurement will change the shape or configuration of the design.[41]In argument counsel for Mr Nabavi placed considerable weight on schedule 2 to his skeleton argument. This contains details of all the relevant garments proved at the trial of which the measurements were known. The drawings are not to scale nor do they claim to be more than a rudimentary record of dimensions and features. Counsel for Mrs Guild accepted that the use of schedule 2 as a forensic aid was legitimate but contended that it should not be used for any other purpose as it had not been proved at the trial and did not properly portray the garments which had been. I have found schedule 2 extremely useful as a summary in convenient form of some of the evidence before the judge. I accept that it cannot be used as a substitute for that evidence and I have not done so.[42]Counsel for Mrs Guild also drew to our attention the fact that she had not had an opportunity of cross-examining Mr Romeo Gigli. For the reasons given in paragraphs 67 and 68 of his judgment Rimer J admitted a statement of Mr Gigli under the Civil Evidence Act. He noted in paragraph 69 of his judgment that a "Gigli sweater" had not been produced at the hearing. The extent to which Rimer J relied on the evidence of Mr Gigli was limited as appears from the following extract from his judgment "Even though he was not cross-examined, I see no reason not to accept Mr Gigli's evidence that he had by this stage [1991] produced square sweaters with a width of at least some 88 cm, and Miss Toft's evidence was that this particular one was about 80 to 90 cm wide. Mrs Tessier was keen to emphasize that Gigli sweaters were quite different in concept from Mrs Guild's, but I did not find her evidence about that very convincing. It was plain from her evidence that he did produce wide square sweaters over several seasons, and I understood her also to accept that some of his designs would have included tapered sleeves, like Mrs Guild's." [138][43]I see no reason why the judge should not have relied on the evidence of Mr Gigli for the limited purpose he did, notwithstanding the fact that counsel for Mrs Guild had had no opportunity to cross-examine him. The cross-examination would, perforce, have been limited given that Mrs Guild's case was that she designed her garments without any reference to the sweater designed by Mr Gigli. Originality[44]The judge dealt with this crucial issue in three paragraphs of his judgment. In paragraph 151 he correctly paraphrased the statutory provisions to which I have already referred. In paragraph 152 he summarised the conclusions he had already reached in the following terms "Mrs Guild had not created any sketches or other designs for any of her garments by the summer of 1991 but that she copied the basics of the design for her own sweater from the Gigli sweater she left with Mr Nabavi in November 1991. The Gigli sweater was 88 cm wide, a measurement shown in the original drawing for the sweater Mr Nabavi took to Havelock for the creation of the first sample. I have found that that sample came out at 100 cm wide, a width Mrs Guild decided to adopt for the sweater and also to use for the cardigan. I have also found that her shirt, designed slightly later, was originally based on the same essential dimensions." [152]

The judge continued:

[45]"Can that design, or those designs, be regarded as "original"? With some hesitation, I have come to the conclusion that they can. The mere copying of another's work will not entitle the copier to claim that his work is original for this purpose, even if the exercise involved an element of skill – which, in the case of garments so basic as these, I consider it would probably not. But in this case there was more to what happened than mere copying. There can be circumstances in which, if a sufficient level of independent skill and labour is applied in modifying a copy design, the totality of the modified design will qualify as an original design for copyright and design right purposes, and the level of skill and labour which has to be applied for this purpose is not a high one. In this case the width of the design was increased by 12 cm to 100 cm and that width was adopted for all three garments, which I am prepared to accept was a design decision by Mrs Guild (her case is of course that 100 cm was always the chosen width). In addition, I accept also that she brought her own skill to bear in designing a crossover collar for the sweater, as well no doubt as other details for it; and also made like use of her own skill and labour in designing the details of the shirt and cardigan. I find that the end result was that her designs for each garment were "original" in the copyright sense." [153][46]In summary the features found by the judge to confer on the designs the requisite degree of originality were(a) the increase in width from 88cm to 100cm,(b) the design of the cross-over collar on the sweater and(c) the design of the details of the cardigan and the shirt. The judge's reference in relation to the sweater to "other details" appears to be to the ribbed cuffs and hems.[47]Counsel for Mr Nabavi submitted that the judge's conclusions were wrong for two reasons, first, because the judge had not properly concluded that Mrs Guild was responsible for these features of the garments, second because they were inherently insufficient to give rise to the necessary quality of originality. I will deal with each submission in turn.[48]The first issue arises from two separate circumstances. The first is that the width of 100cm adopted for all three garments originated not in any design made by Mrs Guild but in a mistake made by Havelock in making the first sample sweater. So, it is said, that feature cannot contribute to any originality to the copy of the Gigli Sweater as it was accidental not designed. I would reject that submission. Though the feature originated in a mistake it was perpetuated on purpose. The adoption of the mistake may not contribute much by way of labour but it can certainly be the product of skill.[49]The second circumstance arises from internal inconsistencies in the judgment of the judge. In paragraph 139, to which I have referred in paragraph 24 above, he observed that the alteration to the width of the sweater from 88cm to 100cm noted on the drawings was made by Mr Nabavi. He also found in terms that "they", that is to say Mrs Guild and Mr Nabavi, "decided" that 100cm should be the standard width for both sweater and cardigan. Given that Mrs Guild and Mr Nabavi were clearly collaborating in the design of all three garments down to August 1992 these findings are consistent with all the others. Rimer J did not refer to any evidence of Mrs Guild, which he was prepared to accept, to justify any finding other than these.[50]Paragraph 140, also quoted in paragraph 24 above, is ambiguous. The judge first noted that "it was decided" to make the cardigan and later the shirt of the same square shape and dimensions. By itself that is a repetition in the passive of what he had attributed to both Mrs Guild and Mr Nabavi in the preceding paragraph. But the paragraph also includes the sentences: "the Guild sweater had a crossover V-neck, and it may well be that the other details were different (the cuffs and rib); and of course the basic – widened – Gigli shape was adapted so as to be made into a cardigan and shirt. I find that Mrs Guild did all this design work." [140] This can be read as attributing to Mrs Guild the design work relating to the cross-over collar and cuffs and rib. This would avoid inconsistency but would not be consistent with paragraphs 152 and 153.[51]In both those paragraphs, quoted in paragraphs 44 and 45 above, the judge clearly attributed the skill in adopting the increased width to Mrs Guild alone. I am concerned that the judge gave no reason for this apparent change of mind. Nor were we shown any evidence which clearly supported a conclusion that Mrs Guild alone was responsible. This is not surprising because her account of the genesis of the designs was wholly inconsistent with any conscious variation on Mr Gigli's theme and had been rejected by the judge.[52]It is also necessary to consider the other alterations mentioned by the judge. It is clear that the round neck on the Gigli Sweater was changed to the cross-over V-neck on the sample produced by Havelock, but there is no evidence that Mrs Guild alone was responsible for it. The "other details", if treated as a reference to ribbed cuffs and hems, are not shown to have been variations on the Gigli Sweater anyway, let alone to have been ones for which Mrs Guild alone was responsible. In these circumstances it appears to me that the attribution to Mrs Guild alone of the increase in the width and "other details" is unsupported by any evidence and contrary to the judge's own, earlier, finding.[53]The second issue on originality is whether the variations on Mr Gigli's design involved sufficient skill and labour to give rise to any design right. It is necessary to guard against the danger of a piecemeal approach. The question is whether all, not just any one or more, of the additional features give rise to the requisite quality of originality. Nevertheless, in answering that question, some consideration of individual features is unavoidable.[54]The principal change, of course, was to increase the width from 88cm to 100cm, an increase of 13.6%. Rimer J found that this width was "relatively unusual". [140] By contrast, the evidence before him, to which he referred expressly, showed that a cross-over V-neck and ribbed cuffs "was not particularly unusual" and "not unusual". The cardigan and shirt necessitated other changes, such as front openings, buttons and hems or edges. The judge concluded that the addition of all these features gave rise to garments which were original in the copyright sense.[55]This court is not entitled to interfere with that conclusion unless Mr Nabavi can demonstrate that the judge erred in principle. (see para 36 above) Counsel suggested that the error was a complete lack of evidence to justify the conclusion. There is considerable force in that submission with regard to the features apart from width of 100cm. There was clear evidence that a cross-over V-neck and ribs on cuffs and hems are common knitwear features. The additional variations on the cardigans and shirts were necessitated by the decision to make cardigans and shirts rather than by any design.[56]But the fact remains that in a later part of his judgment the judge concluded that the design as a whole was not commonplace. He held "Whilst I do not regard Mrs Guild's designs as being the only ones that favoured the wide look, I regard the weight of the evidence, including the expert evidence, as pointing to the conclusion that, by the time she was creating her designs, their essential features were not commonplace in the relevant design field and I so find. I find in favour of Mrs Guild on her unregistered design right claim." [165] Once again, therefore, it was the width of the garments, 100cm, when taken with the other features which gave rise to the judge's conclusion. If, as I have concluded, the decision to adopt a width of 100cm was not a design feature attributable to Mrs Guild alone, then the remaining features are insufficient to confer the requisite quality of originality on the garments as a whole. I conclude, therefore, that Mr Nabavi has demonstrated that the judge was wrong in principle on the issue of originality. Copying[57]I consider this issue on the assumption that the judge was, contrary to my view, right on the issue of originality. The question is whether the garments made by Mr Nabavi, of which Mrs Guild complains, were made exactly or substantially to the shapes or configurations recorded in the original garments made by her in 1991-1992. The garments complained of were described by the judge in the following terms: a) The sweater (garment DD) "Garment DD is a brown/grey crossover (left over right) V-neck sweater produced by Mr Nabavi for the autumn/winter season 1997/98. It is 84.5 cm wide under the arms and about 82 cm wide at the bottom. Its length is on average about 68.25. Its rib is about 8 cm long and its cuff about 8.5 cm. Its sleeves are 34.5 cm long and taper from about 25.75 cm wide at the armhole to about 11.25 cm wide at the cuff end. The upper line of the sleeve continues that of the shoulder line. The neck welt is on average 8.5 cm wide and so is the body welt." [27] b) The cardigan (garment Y) "Garment Y is said to be the Nabavi copy.... It is buttoned down the front with five buttons, which also do up the men's way, and which are 10.5 cm apart, centre to centre. It is 95 cm wide at the bottom and its length is uniformly 76 cm. Its rib at the bottom is 5.5 cm wide. Its sleeves are 31 cm long, their width of 23 cm at the armhole tapering to 14 cm at the end of the cuff. The cuff is 5.5 cm long. The depth of the V from centre back neck to the V opening is 21 cm and that to the centre of the first button is 28 cm." [30] c) The shirt (garment Z) "Garment Z is an example of a Nabavi shirt said to have been copied from Mrs Guild's design for garment KK. It was purchased in 1997. It too is in cream viyella. Its mid body width is not agreed. The claimant's measurement is 98.5 cm, Mr Nabavi's is 97 cm, and my own attempts at measurement (not as easy an exercise as it might seem) pointed if anything to a slightly narrower measurement than that. In the circumstances I propose to prefer Mr Nabavi's measurement and find that it is 97 cm wide. Its width at the top – between the armhole seams – is 94 cm. Its length is 77 cm at the sides and 78 from side of neck to hem. Its sleeves are 34.5 cm long. One cuff is 5.5 cm, the other 6 cm long. The armholes are on average 23.25 cm wide. The upper line of the sleeve follows a line similar to that of Mrs Guild's shirt, and the lower line also slopes up to the cuff, so that the sleeve is of a similar tapered style, although the degree of tapering is slightly less than that of the Guild shirt. The collar is similarly conventional, its label reads "Eskandar", the shirt buttons conventionally down the front with seven buttons (which are slightly smaller than the Guild buttons, and measure 10.5 cm from centre to centre) and the hem at the bottom is about 2.5 cm wide." [20][58]In paragraphs 154 to 158 of his judgment Rimer J considered whether these garments infringed Mrs Guild's rights. It must be borne in mind that at this stage of his judgment he had not decided the question of artistic craftmanship so that infringement of both copyright and design right was in issue. As I have pointed out in paragraph 11 above the test is not the same.[59]In paragraph 154 the judge noted that Mr Nabavi admitted being influenced by things he learned with Mrs Guild, particularly her buttoning style for the cardigan. The judge recorded the evidence of Mr Nabavi that he did not have any of Mrs Guild's garments in his possession nor any drawings save those he subsequently found and produced at the trial. He summarised the case for Mr Nabavi, admitted that he did not find the issue of copying an easy one and continued: "The difficulty Mrs Guild faces is that her designs are so basic and simple that the burden she has of proving that Mr Nabavi has actually copied them is considerable. She is not entitled to a monopoly in the concept, or idea, of the type of square garments in which she specializes. She is not entitled to a monopoly in garments of the particular dimensions she favours – although she does not appear to be very fussy about precise dimensions, since a few centimetres here and there do not appear to be particularly important to her. All she is entitled to do is to object to competitors taking for their own use and benefit the skill and labour she has put into her own designs: she cannot object if they independently come up with designs substantially similar to hers. If, for example, a competitor were to decide to design a wide, square sweater, and were to decide on a width of, say, 100 cm, then it may be that the end result would be much the same as Mrs Guild's. But it by no means necessarily follows that it would. For example, one simple design choice would be as to the sleeve length – whether they should fall to the hands, or be longer and require to be folded back." [155][60]In paragraph 156 the judge again summarised the case for Mr Nabavi to the effect that any similarity between his garments and those of Mrs Guild was coincidental. In doing so he found that "the casual observer would, I consider, – and as I regard the evidence as proving - conclude that they were the work of the same hand. I in fact regard the closest of the comparisons as between the competing shirts, even though I accept that Miss Warner played an independent part in the details of the design of the collar and cuffs. The two cardigans (Mrs Guild's HH and Mr Nabavi's Y) are also very similar. The overall dimensions and style are essentially the same, although the cuffs and body rib on the Guild garment are substantially wider than those on the Nabavi garment, and the latter appear to reflect an independent design choice by Mr Nabavi. Mrs Guild's garments LL and NN and Mr Nabavi's garments AA and DD – all crossover V-neck sweaters - are also very similar in their overall style and dimensions, although again certain of the details are not identical." [156][61]The comparators available to the judge were not the garments produced in 1991-1992 but those made by Mrs Guild in and after 1996. They differed from the original garments in the respects summarised in paragraph 33 above. The judge then posed the questions: "Did Mr Nabavi copy the essentials of Mrs Guild's garments, whilst adding his own variations of style to matters of detail? Or did he arrive at the end result represented by each of his garments by a wholly independent design? In answering that question I have found it tempting to conclude that Mrs Guild's designs are so simple that any designer deciding to embark on the creation of a big square garment of a like generic kind as hers would be quite likely, if not inevitably, to arrive at garments with essentially the same overall dimensions and features. It is not difficult to move from this to the further conclusion that Mr Nabavi could quite easily have arrived at his design choices without any need to copy any feature of Mrs Guild's garments, a conclusion made easier by the fact that he had displayed considerable interest in the concept of wide garments before he met Mrs Guild." [157][62]After referring to a submission of counsel for Mrs Guild Rimer J said: "Ultimately, I have come to the conclusion that the elements of similarity between the three classes of garment in issue are so remarkable that, despite the admitted design differences, the inevitable inference is that Mr Nabavi must have copied the essentials of his designs from those of Mrs Guild and I so find. A comparison of the three types of his garments of which Mrs Guild complains with the wide chunky sweaters he was producing pre-Guild appears to me to reflect something of an overall sea change of design choices on his part. The change appears to me to reflect an obvious adoption by Mr Nabavi of the essential shapes and overall dimensions of the Guild garments, which are their most striking features. I do not, in so finding, suggest that he actually used Guild garments in designing his own. He may or may not have done. But he did not need to. He had been in at the conception, gestation and birth of all Mrs Guild's designs, he knew precisely what their essentials were and the reproduction by him of these essentials for his own purposes must have been the easiest of tasks. I find, therefore, that Mr Nabavi's garments did involve a substantial element of copying from Mrs Guild's garments and I find that what he copied can and should be regarded as the appropriation of the skill and labour which she had put into her designs." [158][63]Thus the essence of the judge's conclusion was that the essential shapes and overall dimensions had been copied and therefore the skill and labour of Mrs Guild had been appropriated by Mr Nabavi. This conclusion is criticised by counsel for Mr Nabavi on a number of bases. First, it is said that the judge compared the wrong garments. Second, it is contended that he failed adequately to take into account the range of garments produced by Mr Nabavi within which the garments of which Mrs Guild complained fell. Third, it is submitted that the judge failed adequately to explain what essential shapes and dimensions he had in mind in the context of the simple and basic designs of which he spoke. Fourth, it is noted that the judge did not explain his reasoning in reaching the conclusion he did, particularly in the light of the fact that there was no cross-examination in respect of Mr Nabavi's denial of copying.[64]In my view there is force in each of these submissions. In connection with design right the judge was right to look at essential shapes and dimensions. In the context of his judgment as a whole it was the width coupled to the arm-length which was significant. The judge was also right to consider such similarities as there were in the context of the basic simple design. But in that context variations in dimension, which will necessarily alter the shape, are important. The original designs with which the judge should have compared Mr Nabavi's garments were all 100cm wide with the other features summarised in the table reproduced in paragraph 33. They were not the same as those garments which the judge took as comparators as I have pointed out in that paragraph. Nor did the judge explain how similar differences in dimension between the original and subsequent garments produced by Mrs Guild could be "minor" when deciding that the latter were the best evidence of the former, indicative of sufficient skill when determining originality but not enough to prevent copying.[65]Thus the original sweater was not 88cm but 100cm wide. Mrs Guild's sweater, garment NN, was 89cm wide at its widest point. Mr Nabavi's sweater, found to have been a copy, was 84.5cm wide at its widest point. The difference in width between Mr Nabavi's sweater and the original design claimed by Mrs Guild of 15.5cm is more than the 12cm found by the judge to have been sufficient to confer on the design claimed by Mrs Guild originality over the Gigli Sweater. The dilemma is inescapable, either Mrs Guild's design was not original or Mr Nabavi did not copy it. This is a clear error in principle which, in my view, entitles and requires this court to scrutinise the judge's conclusions closely.[66]The same exercise can be performed on the other garments. Thus the features of the original cardigan, as shown in the table set out in paragraph 33, included not only a width of 100cm but also two lengths of 80cm and 52cm and sleeve length of 38cm. By contrast Mrs Guild's cardigan produced in 1996/97 was 98.5cm wide, with lengths ranging from 75cm to 77.5cm and sleeve length of 29.5cm. Mr Nabavi's cardigan (garment Y) was 95cm wide, 76cm long with a sleeve length of 31cm. Whilst the dimensions of Mr Nabavi's cardigan may be broadly comparable with those of Mrs Guild's cardigan produced in 1996/97 they are substantially less than those of the original design.[67]In the case of the shirt the only known dimensions of the original design were 100cm wide and an armhole of 22cm. Mrs Guild's shirts produced in 1997 (garments KK and JJ) were 101cm to 105.5cm or 100cm wide, 71cm-73.5cm or 72cm to 74cm long with sleeves of 26cm length. The shirt produced by Mr Nabavi is 94cm-97cm wide, 77cm-78cm long with sleeves 34.5cm long. Thus Mr Nabavi's shirts are by no means as wide as the original and even if Mrs Guild's later productions are the best evidence of the other dimensions of the originals Mr Nabavi's shirts are significantly longer in both the body of the shirt and the length of the sleeve.[68]The judge accepted that Mr Nabavi had produced garments to the "over-wide" design before he met Mrs Guild. The evidence also showed that Mr Nabavi continued to do so after his commercial relationship with Mrs Guild ceased in August 1992. The details are shown in Schedule 2 to the skeleton argument of counsel for Mr Nabavi. In particular 100cm widths were used in the machine knit garments made for him by Mrs Robertson and Mackinnon International Knitwear Ltd in 1993 to 1995. Thereafter the widths reduced. The judge commented: "This summary of what Mr Nabavi produced over the years is not intended to be comprehensive, but shows he was certainly not what might be termed an exclusively 100 cm designer. In the course of his closing submissions, Mr Garnett took me carefully and thoroughly through the various design developments in Mr Nabavi's creations over the years after he parted from Mrs Guild. To describe them in detail would extend this judgment intolerably. I should, however, at least comment that there was some suggestion made by Mrs Guild that Mr Nabavi's choice of colours for his garments closely tracked her own choices, an allegation I did not find proved." [117] The judge came back to this aspect of the case in paragraph 154 when he summarised Mr Nabavi's case. But he did not refer to it again in reaching his own conclusion.[69]The third criticism relates to the judge's failure to specify what he meant by the essential shapes and overall dimensions of Mrs Guild's designs. This ties in with the first and second criticisms. The judge referred in paragraph 158 to the remarkable elements of similarity between the three classes of garment in issue. He must there have been referring to the visual comparisons to which he had earlier referred in paragraphs 20, 28, 30 and 156. But he had compared the wrong designs. I am unable to see any "sea change" between Mr Nabavi's pre- and post- Guild garments with widths approaching or exceeding 100cm nor any obvious adoption of essential shapes and overall dimensions from Mrs Guild. The sea-change to which the judge referred but did not explain can be traced to the closing submissions of counsel for Mrs Guild. But that was a reference to her contention that Mr Nabavi had diversified from sweaters into cardigans and shirts as well. But such diversification has nothing to do with design and, anyway, extended further than the designs of which complaint was made.[70]There are many reported cases which illustrate the proposition that similarity together with the opportunity to copy justify an inference of copying if the alleged plagiarist fails to satisfy the judge that there is some other innocent explanation. It is clear that the judge did not consider this to be a case of unconscious copying.[71]It is unfortunate that the judge did not explain his process of reasoning. He could only infer copying if he rejected the contrary evidence of Mr Nabavi. But the cross-examination of Mr Nabavi was directed only to the opportunity to copy. He was not cross-examined on the issue whether he had copied in fact. On all other occasions when the credibility of Mr Nabavi was in question the judge accepted his evidence and said why. On this occasion the judge makes no reference to Mr Nabavi's evidence on the point and gives no reason why, if he did consider it, he thought fit to reject it.[72]In my view the inference the judge drew was far from inevitable; I consider that he drew the wrong inference. I have already indicated the areas in which, in my view, he fell into error. It may be helpful to draw them together.[73]First, there is no doubt that Mr Nabavi had produced garments of an "overwide" nature before he met Mrs Guild. The judge found that garments designed by him in and before early 1991 were of a width equal to or exceeding 100cm. Even if it be allowed that the increase of width from 88cm, as found in the Gigli Sweater, to 100cm, as produced by Havelock, was sufficient to make the design original it was by no means unique and, in particular, a width of 100 cm had been used by Mr. Nabavi before he met Mrs. Guild.[74]Second, as the judge recognised, the simplicity of the design was such that the burden of proof of copying resting on Mrs Guild was considerable. The likelihood of coincidence rather than copying is that much greater with a basic and simple design than with something more unusual and elaborate.[75]Third, the judge's conclusion that Mr Nabavi had copied the original design of Mrs Guild in making the sweater of which complaint was made is vitiated by the fact that he took the wrong comparator. Whether or not the judge was right to see a visual similarity between garments NN and DD he was plainly wrong to find that garment NN was made to the original design with only "minor" alterations or that there was an equivalent similarity between garment DD and the original design for the sweater. If Mr Nabavi had not copied the sweater what is the justification for finding that he copied the cardigan and the shirt? Though the differences between the original designs and garments Y and Z are not so pronounced if Mr Nabavi had not copied the sweater why should it be inferred that he copied the cardigan and the shirt?[76]Fourth, when the association between Mrs Guild and Mr Nabavi came to an end in August 1992 Mr Nabavi did not retain any garments made during the period of that association. He had the drawings used by Havelock in November 1991 but denied using them and only rediscovered them after this action had been brought. The garments he produced after August 1992 included more than a few of a width of 100cm or thereabouts. The production of these garments is at least as consistent with a return to his previous styles as with copying those of Mrs Guild. Certainly his collection was more diverse than before but that is not, in my view, any reason to infer copying when they were so dissimilar in design.[77]Fifth, the judge did not, in terms, reject the evidence of Mr Nabavi that he did not copy Mrs Guild's designs. Generally he appears to have found Mr Nabavi to have been a reliable witness. He acquitted him of any intention to mislead the court. No doubt the judge was entitled to draw an inference adverse to Mr Nabavi. But his principal reason for doing so was similarity. In relation to the sweater he was wrong. In relation to the cardigan and shirt he never considered whether they were natural progressions from the sweater or whether the similarities were sufficient to discharge the considerable burden of proof he recognised.[78]For all these reasons, in my view, the judge was wrong to conclude that Mr Nabavi had copied Mrs Guild's designs. I would allow the appeal on this ground too. Substantiality[79]I have dealt with most of the submissions made under this head in considering the issues of similarity relevant to the issue of copying. In view of my conclusion on copying there is no separate issue on substantiality. Conclusion[80]For all these reasons I would allow the appeal on the bases that the judge was wrong a) to attribute to Mrs Guild the alterations to the Gigli Sweater which, in the view of Rimer J, made the designs of her sweater, cardigan and shirt original for the purpose of s.213 CDPA; and b) to infer that Mr Nabavi had copied any of those designs. There remains Mr Nabavi's counterclaim. It was agreed that the issue whether we should grant any injunction, and, if so, in what form should await our decision on the appeal. Lord Justice Robert Walker :[81]I agree

Lord Justice Rix:

[82]I agree, and I only add some thoughts of my own of a more general nature.[83]First, coming as I do from the different background of commercial law, I confess to being surprised that the allegation of copying, which in this case has been one of conscious copying (Mrs Guild's statement of claim referred to the "flagrancy of the infringements"), has been treated from the point of view of the pleadings in an informal way. I make these comments with diffidence, because I am a relative ingenue in the field of intellectual property and I am also conscious that in the commercial as perhaps in any other field of civil law there can certainly be a practical and wholly sensible desire to ensure that the real points in issue between the parties are decided, provided that can be done with fairness, even in circumstances where the pleadings lie somewhat behind or below the pitch of the argument as it has developed in court. Moreover, in this very case there had been no submission that the argument must not continue, as it certainly did, beyond the pleaded case. Mr Garnett made it plain that he accepted that Mr Nabavi knew the allegations that he faced and was in no sense taken by surprise.[84]Nevertheless, I remain concerned that the errors which the Vice Chancellor has identified in his judgment are somehow connected with what I have described as the informal way in which Mrs Guild's allegation of copying was treated. Mrs Guild's case on copying (and on originality) had been that in the summer of 1991 she had created an original design recorded at that time in an original sketch for each of the three types of garment in question, sweater, cardigan and shirt, that subsequently each of those garments had been made in association with Mr Nabavi to her respective design and sketch, and that Mr Nabavi had, in the allegedly infringing garments, copied her designs and sketches as represented in those original garments. Mr Nabavi denied copying, denied that Mrs Guild had made the sketches she alleged, and alleged instead that the designs and development of each of the garments originated in the copying of the Gigli sweater, which Mrs Guild had brought to a meeting at his offices in November 1991. There was no pleaded alternative case and no pleaded reply to the effect that even if Mrs Guild's primary case was mistaken, and even if Mr Nabavi's positive defence was correct, nevertheless he had still copied some other original product of Mrs Guild's skill and labour to be identified in some other sketch or garment. In such circumstances, with the failure of Mrs Guild's case and the acceptance of that part of Mr Nabavi's positive defence which rested on the copying of the Gigli sweater, the judge might have dismissed the action, as the Vice Chancellor has remarked in para 30 above.[85]I would not wish to say anything which might place unwarranted difficulties in the path of a claimant who complains of the infringement of his or her intellectual property rights. I recognise that copying is usually done not merely in secret but within the private domain of the infringer's mind, and that proof must very often, perhaps nearly always, be a matter of inference from objectively observable facts. Nevertheless, I am concerned that an allegation of at any rate conscious copying is a serious allegation, probably involving a deliberate or reckless taking of another's skill and labour: it is an allegation of plagiarism which, if accepted, may well be destructive of the infringer's reputation. In such circumstances one would expect such allegations to be required to be strictly pleaded and proved, and that failure of the case alleged would mean failure indeed.[86]Secondly, if, however, a more informal approach is justified, then it becomes all the more important in my judgment that the exercise of inference be conducted scrupulously and transparently. It is often said that copying is prima facie to be inferred from similarity and opportunity. In the present case the judge found similarity and opportunity. But in what was the similarity? In a case where Mrs Guild's pleaded case failed, there was particular need for care in making the comparisons and identifying the essential features of shape or configuration which are said to be the prima facie hallmarks of copying. I agree with the Vice Chancellor's analysis that in this respect the judge erred at this first essential step on the road. Moreover, given the simplicity of the design, the hesitancy of the finding of originality in it, and the uncertainty of the features of it which are said to be reproduced, it needs to be recognised that any prima facie inference of copying is itself a weak one.[87]Thirdly, any inference to be drawn from similarity and opportunity is only a prima facie inference. It is important to do justice to the defence. In this case, the judge certainly reminded himself of Mr Nabavi's case in paras 154 and 156 of his judgment, and came close to accepting it in para 157 ("I have found it tempting to conclude..."). Ultimately, however, he rejected it (at para 158). He did so on the basis that the "elements of similarity...are so remarkable" that the inference of copying was "inevitable". But in truth the inference from similarity was a weak one.[88]The judge went on to speak of "an overall sea change" by reference to the "wide chunky sweaters" which Mr Nabavi was designing before he met Mrs Guild, and to refer to Mr Nabavi knowing precisely what the "essentials" of Mrs Guild's designs were. When this court asked Miss McFarland what those essentials were, she referred us to the agreed findings of the experts which the Vice Chancellor has quoted at para 38 above. The experts' reports and those agreed findings, however, were concerned with copyright, not design right. In this passage of his judgment, Rimer J was dealing with the issue of copying at a stage when he had not yet rejected Mrs Guild's case on copyright. It was therefore appropriate for him to have regard to the experts' evidence. Even though he went on to refer to "shapes and overall dimensions", which indicates that he also had the different and more limited scope of design right ("shape and configuration") in mind, his reference to that overall sea change from Mr Nabavi's pre-Guild wide chunky sweaters confirms that considerations other than shapes and dimensions and more appropriate to copyright were in the judge's thoughts. Such other considerations, however, could not be relevant to the question of infringement of design right. In any event, it was not really accurate to talk of an overall sea change from the wide chunky sweaters to the garments found to be copied from Mrs Guild, because those infringing garments were only a small part of Mr Nabavi's varied output over the relevant years from 1991 to 1997. But, even if it was correct to talk of a sea change, the change was not so much in dimensions (for the reasons given by the Vice Chancellor) as in the other essentials spoken to by the experts such as materials, fibres, trims and knit. Mrs Guild had taken the Iranian peasant idea of a wide square garment and refined it and given it expression in luxury fibres such as alpaca and cashmere. But that refinement was not part of the design right which s.213 protected.[89]Finally, nowhere in para 158 does the judge give weight to the fact that he had found Mr Nabavi, in general, to be an honest witness whose evidence on all other essential issues discussed in his judgment he had preferred.[90]In sum, I do not think that the inference of copying was cogently articulated or correctly drawn and for these reasons as well as the reasons of my Lord, the Vice Chancellor, I would allow this appeal.

Order

Appeal allowed; agreed minute of order lodged with the court; leave to appeal refused. (Order does not form part of the approved judgment)

Cited in 1 later judgment