T & A Textiles and Hosiery Ltd v Hala Textile UK Ltd and Others
| Jurisdiction | England & Wales |
| Judge | Douglas Campbell |
| Judgment Date | 23 October 2015 |
| Neutral Citation | [2015] EWHC 2888 (IPEC) |
| Docket Number | Case No: IP-2014000035 |
| Court | Intellectual Property Enterprise Court |
| Date | 23 October 2015 |
[2015] EWHC 2888 (IPEC)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
Douglas Campbell
Sitting as a Deputy High Court Judge (IPEC)
Case No: IP-2014000035
Tim Austen (instructed by Myerson Solicitors LLP) for the Claimant
Ashton Chantrielle (instructed by Verdant Solicitors) for the Defendants
Douglas C ampbell sitting as a Deputy High Court Judge (IPEC):
Introduction
This is an action for infringement of copyright in certain artistic works, and for infringement of United Kingdom registered design no. 4 010 499. The Claimant's complaint concerns bed linen sets marketed by the First Defendant. For reasons which will appear, it is not necessary to distinguish between the Defendants save as regards the liability of the Third Defendant, and save in that context I will refer to the Defendants generally. Mr Tim Austen, instructed by Myerson Solicitors LLP, appeared for the Claimant and Miss Ashton Chantrielle, instructed by Verdant Solicitors, appeared for the Defendants.
As regards the copyright claim, eleven distinct bed linen products sold by the First Defendant are said to infringe copyright with respect to eleven original artistic works created by Mr Muhammad Adnan Aslam ("Mr Aslam"), a director and employee of the Claimant. The evidence at trial focussed on two works in particular, namely those referred to as "Chantilly" and "Manhatten" by the Claimant. The Defendants' alleged infringing products with respect to these were called "Richmond" and "Stephanie" respectively. The products were obtained by the First Defendant from a Pakistani company which was variously called Hala Exports or Hala Industries. I shall refer to it as Hala Exports for convenience.
Much less time was spent on the registered design case. The design in question is registered in respect of a label for packaging and the Defendants accepted at trial that if the design was validly registered, it was infringed. However validity was challenged by the Defendants on the grounds of two alleged prior uses. One prior use was said to have been made by the Defendants themselves, in that they claimed to have been using the same packaging since around 2004 and in any event before March 2009 (the 10 th March 2009 being the date as of which the design was registered). The other prior use was said to have been made by another company, Imperial Packaging ("Imperial").
The Defendants counterclaim for invalidity of the registered design, and for groundless threats of proceedings for infringement of registered design. The alleged threats fall into two categories: threats to third party companies (including in particular two companies called Designer Textiles and Nice Carpets), and "a letter sent to eBay" about the First Defendant's listing. It turned out that there were in fact a number of documents passing between eBay and the Claimant, as I explain below. The Claimant says that such threats were justified, and that the Defendants have not suffered any loss or damage resulting therefrom.
At the case management conference held before HHJ Hacon on 5 th March 2015, the Claimant was given permission to serve 1 witness statement of fact and the Defendants were given permission to serve 3 witness statements of fact. No directions were made for reply evidence but both sides were given permission by the Judge to apply for the same.
In accordance with that order the Claimant served a witness statement from Mr Aslam. The Defendant however served 4 witness statements, from Mr Abdul Hadi Shehezad (the Second Defendant, and also a director of the First Defendant); Mr Muhammad Amin (who claimed to have been in charge of designing Hala Exports' designs for its bed linen since 2008, and in particular to have designed the alleged infringing products); Mr Muhammad Sarfraz (operations manager at Virginia Packages, which packaged the Defendants' alleged infringing products); and from Mr Ahtram-ul-Haq (partner owner of Imperial) under a Civil Evidence Act notice.
Events then took an unusual turn. Mr Aslam travelled to Pakistan on 7 August 2015 for a work trip and met Mr Amin there. Mr Aslam said that Mr Amin told him he never saw or signed the witness statement in his name, and that he would not be coming to the UK to attend trial. Mr Shehezad then received a video recording from Mr Amin about a week later. In this video recording Mr Amin claimed to have been offered cash incentives by Mr Aslam to sign various documents, and to have been threatened upon Mr Amin's refusal to do so.
On Tuesday 22 nd September 2015 both sides applied to serve extra evidence, and neither opposed the application of the other. This evidence fell into 3 categories. The first category was conventional reply evidence. Since permission for such an application had been given at the case management conference, Part 63.23(2) was not engaged and no exceptional circumstances had to be shown. I was satisfied that the evidence in this category was genuinely evidence in reply and admitted it. The second category was the evidence relating to Mr Amin which I have summarised above and in relation to which both sides accepted Part 63.23(2) was engaged. Both sides argued not just that the evidence was important to their respective cases, but that the circumstances were exceptional having regard to the serious allegations made on both sides (ie the Claimant's allegation that the Defendants had fabricated important evidence and the Defendants' allegation that the Claimant had intimidated a key defence witness into withdrawing from the case). I agreed that these circumstances were exceptional and permitted both sides to rely on evidence on this issue. The third category was expert evidence which the Defendants sought to adduce in relation to electronic files of the artistic works relied upon, which files had been disclosed by the Claimant on 7 th July 2015. Part 63.23(2) was again engaged but this time the circumstances were not exceptional, hence I refused permission in that respect. Neither side sought permission to appeal from any of these decisions.
I also pointed out to the Defendants at that hearing that since permission had only been given for 3 witness statements, they could not rely on all 4 which they had served. The Defendants subsequently dropped reliance on the statement of Mr Ahtram-ul-Haq.
Witnesses
As will become apparent, most of the issues in this case are issues of fact not law; and both sides made headway in attacking the fact evidence of the other. I will start with an assessment of the witnesses who gave live evidence.
Mr Aslam was subjected to a searching cross-examination covering a wide variety of ground. The Defendants submitted that he was aggressive in his answers, citing Mr Aslam's response to an allegation of VAT fraud. I reject this criticism. Mr Aslam was entitled to provide a robust response to this allegation, which was not made out and in any event irrelevant to the issues in the case.
Mr Shehezad was a good witness who gave clear answers and readily made concessions. A week after the hearing took place, the Claimant filed a document raising a number of detailed criticisms relating to Mr Shehezad's evidence about certain delivery notes and submitting that his evidence should be disbelieved. As the Defendants submitted, and as I accept, this is far too late. These criticisms could and should have been put to Mr Shehezad in cross-examination at the trial in order to give him an opportunity to deal with them but the Claimant did not do so. Moreover the importance of those delivery notes to the Defendants' case was apparent from Mr Shehezad's witness statement itself, dated 1 st May 2015, and had also been stressed by the Defendants in their skeleton argument for the trial. In these circumstances I decline to consider any of these criticisms, and I specifically reject the submission that I should disbelieve any of Mr Shehezad's evidence as a result.
Mr Dev Rajasani was the Defendants' interpreter for purposes of the cross-examination of Mr Sarfraz. I am grateful to him for his assistance.
Mr Sarfraz gave evidence by video link from Pakistan. He was plainly keen to help, although his answers were not always concise. However it became apparent during his cross-examination and re-examination that he could not really remember for how long the Defendants had been using the alleged infringing packaging. In closing submissions, the Defendants understandably did not rely on his evidence.
Mr Amin did not attend, and was not offered for cross-examination by video link. Instead the Defendants served a Civil Evidence Act notice in respect of his evidence. I consider the substance of this evidence below.
Subsistence of copyright
Legal context
The relevant law was not disputed. Both sides agreed that the works in question were to be treated as artistic works within section 4 of the Copyright Designs and Patents Act 1988, and neither side suggested there was a material difference so far as originality was concerned between the "author's own intellectual creation" test and the traditional UK "skill and labour" test: see SAS Institute Inc v World Programming Ltd [2014] RPC 8, CA. I will use the former test.
The evidence
Mr Aslam gave various creation dates for the bedding designs relied on in this action: see Aslam I at [16]. For instance he said that he created the...
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