Response Clothing Ltd v The Edinburgh Woollen Mill Ltd
| Jurisdiction | England & Wales |
| Judge | Hacon |
| Judgment Date | 29 January 2020 |
| Neutral Citation | [2020] EWHC 148 (IPEC) |
| Court | Intellectual Property Enterprise Court |
| Docket Number | Case No: IP-2017-000174 |
| Date | 29 January 2020 |
[2020] EWHC 148 (IPEC)
HIS HONOUR JUDGE Hacon
Case No: IP-2017-000174
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
Michael Smith (instructed by Taylors Solicitors LLP) for the Claimant
Gwilym Harbottle (instructed by Gately plc) for the Defendant
Hearing dates: 3–4 December 2019
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
HIS HONOUR JUDGE Hacon
Introduction
The claimant (‘Response’) is a company based in Oswaldtwistle, Lancashire. It designs and markets clothing. The defendant (‘EWM’) is a major retailer of clothing with about 400 stores in the UK.
For three seasons between December 2009 and 2012 Response supplied EWM with ladies tops made of a jacquard fabric of a design referred to in the evidence as a ‘wave arrangement’. The distinctive feature of jacquard fabrics is that the design they display is woven into the fabric itself, rather than being stamped, printed, or embroidered on top of the fabric. In this instance the design consisted of multiple lines in a wave pattern.
In 2012 Response sought to increase the price of the tops. The new price was rejected by EWM. EWM then supplied a sample of Reponse's top or a swatch of Response's fabric to other garment suppliers, including a UK based company called Visage Limited (‘Visage’), with an invitation to supply tops made from a similar fabric. Visage got the order. From 2012 to 2015 it supplied EWM with tops made from a jacquard fabric which I will call the ‘Visage Fabric’.
In 2015 Response again changed suppliers, now sourcing similar tops from Vietan Industrial Production and Trading Joint Stock Company – Hai Phong Branch, a Vietnamese company referred to by the parties as ‘Cingo’ and from a manufacturer based in Dhaka, Bangladesh called ‘Bengal Knittex’. I will refer to the fabrics used for those tops as the ‘Cingo Fabric’ and the ‘Bengal Knittex Fabric’ respectively.
Tops made from the Cingo Fabric were sold by EWM for one season only but those made from the Bengal Knittex Fabric have been sold ever since and are still in EWM's range.
Response claims that copyright subsists in its wave arrangement design, either as a graphic work or as a work of artistic craftsmanship and that it is the owner of that copyright. Response alleges that the Visage, Cingo and Bengal Knittex fabrics were infringing copies of the wave arrangement design and that EWM has infringed its copyright by the sale of tops made from the infringing fabrics, such sales being both primary and secondary acts of infringement.
Michael Smith appeared for Response, Gwilym Harbottle for EWM.
Witnesses
Response relied on two witnesses of fact. One was Faisal Patel, the sole director and shareholder of Response. He was a good witness, I believe doing his best to give honest and accurate answers. There was also a witness statement from Ray Park, President of GIN Textile Inc, a South Korean manufacturer of fabrics (‘GIN Textile’). Mr Park did not attend at trial, but a Civil Evidence Act Notice was filed.
Three witnesses of fact attended on behalf of EWM. They were Jason Anderson, Managing Director of EWM, Jean Paul Chan, country manager of EWM responsible for Bangladesh and Alizon Blythe, senior ladieswear buyer for EWM. Mr Anderson and Mr Chan were both good witnesses. Ms Blythe was shown in cross-examination to be sometimes willing to make assertions about matters outside her knowledge. There were also witness statements from Chen Shen of China Ningbo International Co. Limited (‘China Ningbo’), a fabric mill in China, and from Shen Qiang, Deputy Manager of Sinotex Corporation Limited, a clothing manufacturer in China. Mr Chen's and Mr Shen's witness statements were filed with Civil Evidence Act Notices.
Response's expert witness was Victor Herbert. Mr Herbert is, among other things, a designer and design consultant with considerable experience in the design of fabrics and fashion garments. Alexander MacLellan, EWM's expert, has over 40 years' experience in the design of textiles and has taught fashion at the Chelsea School of Art and The Royal College of Art and at fashion institutes in Italy. Both experts provided helpful answers to all the questions put to them.
Identifying the copyright work
The Particulars of Claim did not specify with precision the nature of the copyright work relied on. Response's wave arrangement design was said to have been created by an employee of GIN Textile. There was a general assertion that fabric designs are graphic works and/or works of artistic craftsmanship.
In a reply to a Part 18 Request, Response repeated its assertion that the work was either a graphic work or a work of artistic craftsmanship, but added this:
“The Claimant understands that the work was created on the loom by the weaver and is therefore a product of craftsmanship. The narrative details of its creation are a matter of evidence and in any event, the Claimant has not been able to obtain further information from GIN Textile at this time for the reasons set out at length above.”
That answer is consistent only with the copyright work being the first fabric created bearing the wave arrangement design. I will call this ‘the Wave Fabric’. It emerged in evidence that in fact the Wave Fabric could not have been made on a loom because it is knitted, not weaved. It was made on a knitting machine, but this made no material difference to Response's case.
Notwithstanding the answer given to the Part 18 Request, Mr Smith maintained the case based on a graphic work. He argued that the Wave Fabric qualified as such.
A graphic work within the meaning of s.4(1)(a) of the Copyright, Designs and Patents Act 1988 (‘the 1988 Act’), as defined in s.4(2):
“ (2) In this Part –
…
‘graphic work’ includes –
(a) any painting, drawing, diagram, map, chart or plan, and
(b) any engraving, etching, lithograph, woodcut or similar work;”
It is true, as Mr Smith said, that the statute defines ‘graphic work’ to include the types of work listed and the list is therefore not exhaustive. It does not follow that the definition is endlessly flexible. All the examples of a graphic work set out in the subsection are created by the author making marks on a substrate to generate an image. I do not think that the definition of a graphic work can be stretched to include a fabric, whether made on a loom or a knitting machine.
The author of the Wave Fabric was never identified and there was no evidence as to what he or she did in creating it. In his supplemental report Mr MacLennan, EWM's expert, speculated that the designer had first created a freehand drawing of the Wave Arrangement design. Mr Herbert, Response's expert, said in cross-examination that the designer would not sketch a technical design such as that used on the Wave Fabric and that it would have been created first on the machine making the fabric.
In closing Mr Smith suggested, by way of an alternative argument, that the drawing was a copyright work on which Response could rely. A drawing is a graphic work but the notion of a drawing being the copyright work was not pleaded. I think that it unlikely that there ever was one. Response's case must rest on the Wave Fabric being a work of artistic craftsmanship.
How the Wave Fabric came to be created
Mr Patel said in his witness statement that some time before April 2009 he conceived a number of designs, one of which was a wave pattern running through the fabric of a ladies jacquard top. Elsewhere in his statement Mr Patel referred to a design idea. The distinction is important, and I understand from the pleaded Reply dated 12 April 2018 to a Part 18 Request that it was no more than the idea of having waves of unspecified design within the fabric. Mr Patel's answers in cross-examination were consistent with this.
In his witness statement Mr Patel said that his design idea was sent to Mr Park of GIN Textile. Communications were handled by an agent based in the UK, Barry Nathan. Mr Nathan did not give evidence. Mr Patel said that he was now retired and did not want to have anything to do with this litigation.
Mr Patel conceded that he did not know the manner in which his request was passed by Mr Nathan to GIN Textile and had no direct knowledge as to what GIN Textile did as a result, including whether GIN Textile copied anything when it created the Wave Fabric. Mr Patel thought at first that GIN Textile had taken about 6 weeks to create the Wave Fabric, but this seems to have been based on the period between sending the request and receiving the first sample. Mr Patel accepted in cross-examination that he did not know how much time within that 6 weeks had been taken by GIN Textile in creating the Wave Fabric.
The Wave Fabric, or more likely a copy of it, was received from GIN Textile and made up by Response into a ladies top. A photograph of the top was taken by Response on 6 April 2009, the date confirmed by a digital camera record. It is the photograph shown in Annex 1 to this judgment and is the earliest record available of the design of the Wave Fabric.
The evidence as to what GIN Textile did in creating the Wave Fabric came solely from Mr Park's witness statement, without the benefit of cross-examination. Mr Park said that he now resides in China and conducts business through a mill there. He confirmed that before April 2009 he had received a request from Mr Patel, transmitted by Mr Nathan, for the GIN Textile mill to experiment with a...
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