Nouveau Fabrics Ltd. v Voyage Decoration Ltd. & Anor

This is an action in which the Claimant maintains a claim for infringement of its copyright in artistic works, namely design drawings for a fabric called "Pineapple". The Claimant ("Nouveau") claims to be the owner of the copyright in certain original drawings because they were created by a Mr Nigel Thompson at a time when he was a UK citizen resident in the UK and employed by Nouveau. That is the first strand of the claim to copyright. The second strand is a claim by assignment taken shortly before the hearing in this action from a French company known as Gratry Lorthiois ("Gratry"). The first defendant ("Voyage") is said to have infringed the copyright by (in short) importing and selling fabric which is said to infringe; until the day before the trial started, there was also an allegation that it infringed the copyright by itself copying, but that allegation was abandoned by the time the case was opened before me. The Second Defendant ("Dunelm") is also alleged to have infringed by possessing and selling infringing copies in the course of its business.

Nouveau is a company which designs and sells furnishing fabrics. Mr Thompson joined the company as an employee on 2^nd July 1990, and was responsible for, amongst other things, design development and graphic design. He is now its Managing Director. Between January and June 1992 he created the design which lies at the heart of this action. He wanted to create a design of small repeated motifs which could be used on fabrics and wallpaper, and if possible which could also be used as the company’s logo. He toyed with a number of small classical designs and in the end decided on something which is in effect a stylised version of an "architectural" pineapple. I say "architectural" because it is a useful way of describing it which has been deployed in this action. In its "architectural" form, often seen on such things as gateposts, the pineapple is a conical or rounded-top shape, resting on a base of some leaves. Mr Thompson’s design, after some refinement, develops this theme. The appearance is that of a pineapple with eight segments, effectively cupped by a stylised leaf arrangement which then in turn sits on a small pedestal with a rounded top, concave sides and a flat base. The pineapple itself is represented by seven trapezoid shapes representing the segments of the pineapple, arranged in a 1-2-3-2 formation starting at the top. The leaf arrangement which cups the shape has a curved leaf shape, curving outwards, at either side, with a central leaf projecting up into the pineapple shape and which is flanked by the two trapezoids which form the bottom row of the pineapple shape. One of the striking features of the shape is that the overall impression is derived as much from white space between the segments as from the solid parts which form the design.

On 4^th February 1992 his design was faxed to Gratry so that they could mock up a sample fabric based on that design with their CAD package. The design was to be repeated on a small scale across the fabric, and details of the repeat were given in the fax. The fax requested a 25 mm vertical repeat and a 34 mm repeat horizontally. Gratry duly produced mock colourways on their CAD package in a variety of colours to illustrate how the fabric would look. Not all the colours appealed to Mr Thompson, and after further discussion with the factory, final designs effectively reproducing his drawings but with certain limited amendments were then produced. The final form of the design on the fabric had a extra dot in the middle of the trapezoid shapes and dots in the leaves, and there was also a degree of separation on the side of the centre leaf which did not figure on the drawing faxed to them. Despite these differences, the motif on the final form of fabric was effectively a reproduction of Mr Thompson’s design. The fabric as produced was made in a variety of colours. The motif repeated 32 times across the width of the cloth and has a height repeat of 50 mm.

The principal work or works in which copyright is claimed in this action are Mr Thompson’s drawings, and in particular the drawing sent to Gratry and those immediately preceding it when the design was refined. In addition, in case it should make a difference, Nouveau also relies on copyright in the drawings (mock colourways) prepared by Gratry, and an infringement of that copyright. An assignment of that copyright and all rights attaching to it (including the right to claim for infringement) was taken during the course of this action and a claim based on those matters was added by amendment.

For a short period of time the cloth was woven by Gratry. However, after some initial orders, the Claimant switched its weavers to English weavers. The motif also made an appearance on wallpaper. Both wallpaper and fabric were sold from about the beginning of 1993 to date. It appeared in adverts in magazines in October 1993, and has featured in exhibitions from time to time. The fabric is sold through John Lewis department stores and Multiyork Furniture Stores. Its quality makes it fire retardant and it is therefore suitable for use in the hotel and leisure industry, into which it has been sold. I find that it has reasonable public availability, a point to which I will return when considering its availability to those who might wish to copy it.

In June 2001 Mr Thompson came across a fabric known as "Luxor". He found it in the Second Defendant’s shop in Doncaster and made a purchase. He was convinced it was a copy of his Pineapple fabric. It contained a motif which has a pedestal, what might be viewed as leaves (one pointing to each side) and one triangle pointing up into the central motif, surmounted by eight shapes in a pyramid with curved sides. The shapes are arranged 1-2-3-2, taken from the top. All but the bottom two are basically parallelograms with a dot in the middle. The bottom two are effectively halves (and therefore triangles), with their base defined by the top of the element that may or may not be leaves (depending on one’s subjective perception). The space between the parallelogram elements is not as pronounced as it is in Mr Thompson’s design. The horizontal repeat of the motif is the same as in Mr Thompson’s design (32 across the fabric) but the vertical repeat is shorter – it is 30 mm as against Pineapples 50 mm. The motif itself is also shorter in height, being 13 mm as against the Pineapple’s 15 mm.

The works which are said to be originals of which Luxor is a copy are, by amendment in this action, twofold. First it is alleged that the Luxor design is an indirect copy of Mr Thompson’s original design work for his pineapple, including the version sent to Gratry and the earlier versions leading up to it. That relates to the motif alone. Second, there is a claim that the CAD designs produced by Gratry were themselves original artistic works and that Luxor is an indirect copy of those works. The Claimant has taken an assignment of that copyright, and sues for infringement of that copyright in the alternative. A claim based on that alternative infringement was added by amendment at the beginning of the trial. As I have indicated, the claim against the Second Defendant is for secondary infringement by selling. The claim against the First Defendant was originally put both on the basis that the First Defendant itself copied and secondly on the basis of secondary infringement by importing and selling. However, by the time the trial was opened the Claimant abandoned the claim that the First Defendant had itself copied the design, and rested its claim purely on secondary infringement.

How the First Defendant ("Voyage") came by the Luxor design is clear enough. Its managing director, Mr Ian Dykes, travelled to Italy in May 2002 to visit some of his existing suppliers. He contacted somebody whom he understands to be an intermediary, namely Ms Gabriella Guarducci, and she introduced him to an Italian supplier called Sotexport SRL ("Sotexport") with whom he had not hitherto dealt. He visited their mill, was presented with a number of designs and selected the Luxor design for future purchase. I was provided with a witness statement of Mr Bruno Mazzoni, who at the time was employed by Sotexport, in which he says that the Luxor design was created in Spring 1999. He said it was created by a company called Magi SRL, an Italian weaver which was taken over by Sotexport at the end of 1999. However, it also appears that an Italian designer called Duebi had a hand in the design. At some point they prepared a schematic design for the Luxor fabric, the purpose of that schematic being not to reproduce faithfully the appearance of the cloth but to specify, in essence, the position of the stitches needed to create it. That schematic is not dated, but it describes the client as being Sotexport. In addition to showing that (in a slightly blocky drawing), it also specified the warps and wefts necessary to create it. An invoice dated 28 February 1999, and a corresponding freight note, showed that Duebi invoiced Sotexport for this activity. There is a suggestion in the correspondence that the design was commissioned by Magi but the circumstances of the creation of Luxor, and in particular its design, remain shrouded in some mystery. I shall have to return to the evidence on this in more detail in due course. Suffice it to say for present purposes that it was clearly originated and woven in Italy, and imported by Voyage. They in turn sold it to various people, including the Second Defendant.

Thus the case is now put on the basis of secondary infringement in relation to infringing copies made in Italy. It is said that each of the Defendants knew, or had reason to believe, that the copies were infringing, which was a necessary element of the wrong of which they were accused. Again, on this point there has been a contraction of the Claimants case. As pleaded, the Claimant’s case against Voyage was that it had the necessary knowledge, through Mr Dykes, at the time of the purchase, import and sale of the fabric. By the time of final speeches that was no longer alleged. It was accepted that Mr Dykes did not have the relevant knowledge until a reasonable time after receipt of a letter before action in which the Claimant asserted its copyright and the breach. The date of that letter was the 30^th July 2001. It is not asserted that the Second Defendant had any relevant knowledge before that date either.

For the purposes of the hearing before me, Mr Burkill QC prepared a list of similarities between the two designs. Since an understanding of the submissions of the defendants depends on that list, it will be convenient if I set it out here:

The relevant provisions all appear in the Copyright, Designs and Patents Act 1988. They are as follows:

The issues which arise is this litigation are as follows:

Is the Luxor motif and fabric a copy of the whole or a part of the Pineapple motif and cloth?

If so, and if only a part, is it a copy of a substantial part?

If so, did either of the Defendants know or have reason to believe that it was an infringing copy, and if so from what date?

Originally there was an issue as to the originality of the complete Pineapple design. It was apparently going to be said by the Defendants that Mr Thompson produced his design by reference to other historical elements to such an extent that his design was not original. However, this approach had been modified by the time of final speeches, when Dr Lawrence for the Defendants indicated that she accepted Mr Thompson’s account of the design of his motif, which was that he did not produce it by reference to any particular historical precedent. She accepted that there was a degree of originality in Mr Thompson’s design, but it was necessary to identify the original "part". In doing so one should exclude what she described as "the underlying concept" in order to arrive at what was original. That means that one excludes the concept of typical architectural pineapples (of which I saw a number of photographs) and in particular the sort of things that one would do if one were reproducing such a three dimensional object in two dimensions. That had the consequence (she said) that one could exclude certain elements of the drawing that reflected that generalised description. The points that should be excluded are points 2(a) to (c), 3, 4, 6 and 7 in Mr Burkill’s points of similarity, which I reproduced above; they represented the idea, and not the expression of it, and were not original for the purposes of copyright. Items 1 and 8 of those points were not part of Mr Thompson’s work (which is correct – they were Gratry’s) so there was only limited originality in relation to the remaining items.

I reject this analysis. It is an attempt to invoke the concept of dissection which was itself rejected in Ladbroke (Football) Ltd v William Hill (Football) Ltd[1964] 1 WLR 273. If Mr Thompson produced his own work, without copying that of someone else, then it is capable of being original even if it contains elements which can be seen in other works. Just as the coupon in Ladbroke fell to be treated as a whole, and not to be dissected into its constituent parts (see per Lord Reid at page 276), similarly Mr Thompson’s drawings each fall to be treated as a whole. As such they are, as a whole, original. They are his conception and execution of an idea. There is no issue as to where the copyright (if any) resides. It is not disputed that in the circumstances the copyright in the motif rests in the Claimant by virtue of his employment.

There was little debate as to the originality of the Gratry drawings. If it mattered in this case, I would be prepared to find that there was just sufficient originality in the rendering of the motif on to the fabric. Certain alterations were added (the dots referred to above, although they may have been added for practical purposes in order to make the stitching more secure), and the separation of the middle leaf, but this is pretty marginal. In the end, and in the light of my conclusions in relation to Mr Thomson’s own designs, this probably does not matter.

I was presented with a great deal of evidence on this point, not much of it from those said to have created the Luxor design. I was asked to compare the two designs, to consider how commonplace the elements were, to consider how commonplace (or otherwise) this sort of design was, to consider where inspiration for the design might have come from, and to consider some evidence from Italy as to where it actually did come from. This is not a case where there is direct evidence of copying; I am asked to infer it. The starting point must be a comparison of the designs to see if the similarities are such as to give rise to an inference of copying. On the facts of this case, if they are not sufficiently similar then there is no other material which will enable me to draw that inference and that would be an end of the matter. If I am able to draw that inference on that limited material, I shall then move on, stage by stage, to consider whether and to what extent that inference is weakened or overborne by the other material.

The purpose of my comparison is:

As appears from that citation, one of the elements giving rise to the presumption is that the alleged copier should have access to the original design. If there was copying in this case it was done in Italy. I therefore have to consider whether or not the putative copiers did have access to the design, which in practice means access to the fabric. There was no direct evidence that Sotexport, Magi or Duebi had the Pineapple fabric in their possession at any particular point in time, but there was evidence that the fabric had been sold to Italian customers. The fabric had been in existence and use since the end of 1992; it had been displayed on exhibition stands in the first three years, but thereafter only in pattern books. 3,500 pattern books have been produced containing it; it has had retail exposure in John Lewis shops and Multiyork outlets; and it has appeared in hotels and other semi-public buildings (on a scale not made known to me). It was known that Sotexport attended exhibitions at which it was available, albeit it was not demonstrated in terms that they had attended one before 2002 (which is after Luxor was created). Sr Rossini, a director of an Italian textile mill who gave evidence in a written statement under the Civil Evidence Act, said that Duebi was a highly regarded studio with a number of mills in Italy. It is not in the least bit implausible that those in the trade, such as Sotexport and Duebi, and indeed Magi, would be interested in the designs of the competition, and the fabric and design was available for that purpose. The fabric was, in essence, publicly available material. I consider that, for the purposes of Lord Millett’s formulation, it is likely that each of them had access to the fabric so that that element of matters giving rise to the presumption is fulfilled.

I therefore turn to assessing the similarity between the motifs, and between Luxor and the Pineapple fabric. I have considered this matter carefully, and I have considered not only the red-brown sample of Luxor, which was originally before me, but also the other colour versions of Luxor that were put before me at the trial, on which some of the features of the Luxor motif are clearer. My conclusion is that, as a matter of impression and judgment, the two designs are sufficiently similar to lead to an inference of copying, looking at the two designs. They are not identical. The Luxor motif is squatter, with the effect that the curvature of the sides of the cone/pineapple element is not so pronounced and is more suggested. The segments of the cone/pineapple element also have straighter sides than on Pineapple; and the bottom two are half-quadrilaterals rather than whole trapezoids (which they are on Pineapple). The base of the pedestal on Luxor is slightly more elongated than on Pineapple. However, precise identity is not necessary to an inference of copying; some dissimilarities can exist even where there has been copying, and my view, looking at the two cloths, and at Mr Thompson’s designs, is that the similarities are sufficiently great to give rise to an inference of copying, at this stage of the argument. This conclusion means that there was indirect copying of Mr Thomson’s designs, and direct copying of the fabric.

Dr Lawrence, however, sought to counter this in a number of ways, with which I shall have to deal.

First, she sought to exclude various potential points of similarity from the equation, so as to arrive at a very limited number of points of similarity that could be compared, and went on to draw the conclusion that since those points appeared elsewhere in other sources, it would be wrong to infer copying. The basis of this submission was Lord Millett’s speech in Desginer’s Guild, as quoted above, and in particular the sentence beginning "It is at this stage …". By this means she seeks to exclude from the points of comparison the same points as she seeks to exclude from originality, leaving only points 2(d) and 5. Since one can see examples of the 1-2-3-2 arrangements in historical and contemporary Italian textiles, it cannot be inferred that this was copied from Pineapple, particularly where there are differences in the shapes involved.

I reject this approach. As Dr Lawrence puts it forward, it applies dissection, rejected by the House of Lords in relation to originality in Ladbroke, to a later stage of the exercise, but it is just as misplaced here. I do not consider that principle or authority warrants it. The purpose of the exercise of comparing similarities is an evaluative one. It is to see whether, looking at the subject-matter as a whole, one can infer that two works are so similar as to lead one to infer copying. Just as originality can arise out of combining unoriginal elements, so an overall impression of sufficient similarity can arise, leading one to infer copying, from a combination of elements which might be said, by themselves, to be unoriginal. Were it otherwise it would be difficult to make an inference of copying in cases where originality has been applied to unoriginal elements. The sort of dissection suggested by Dr Lawrence would stand in the way of that exercise. Nor do I read Lord Millett as requiring it. First, the verb he uses is "may", not "must". Second, what he says may be disregarded is "similarities", not "elements". Thus it would be commonplace and unoriginal for a portrait to depict an oval shape with two eyes either side of a nose, and that point of similarity would be disregarded if assessing whether one is looking at an infringing copy or not; but one would not ignore the particular layout, colour, appearance and so on of those elements if one is assessing the possibility of copying. So one ignores one level of similarity, but not others in relation to the various elements.

With one possible exception, there is nothing sufficiently commonplace in the points of similarity relied on by Mr Burkill to fall within Lord Millett’s remark, and I therefore have not ignored any of them for the purposes of my assessment of the two designs. The possible exception is the 32 repeat across the fabric. The evidence before me was that, given the weaving technology involved, there were a number of standard repeats for small motifs on fabric, one of which was 32. That point of similarity can therefore be regarded as weak or of no real significance.

Next Dr Lawrence sought to impress upon me the differences between the two motifs. Pineapple was much more sophisticated, and its overall effect was produced by space between segments as much as, or more than, lines and solids. There were a number of small nuances which combined to give an overall impression; Luxor was not just a cruder version of Pineapple, it was different. In this respect she relied on one of her experts, Ms Schoeser, an expert in fabrics and fabric design, who spoke eloquently of the different styles of the designs and of what she saw as the different potential sources of the Luxor design, or the inspiration for it. The pineapple or pine cone style of motif was prevalent in art and architecture. I have borne in mind carefully all that Ms Shoeser said about how the designs should be "read", and what she sees as their historical background, but I am not persuaded that it is sufficient to outweigh the conclusions I draw from comparing the motifs. There are many other pineapple-like designs in existence, but she did not show me anything particularly close to Luxor or Pineapple, and Dr Launert, the claimant’s expert (an expert in art and design), said that she had not seen anything that closely resembled the Pineapple motif. Ms Schoeser said that in her view a design appearing in a publication by the Victoria & Albert Museum, to which I will refer below, contained a cone/leaf/pedestal design which meant that (in her view) Mr Thompson’s design was not, to that extent, original; but that design is (so far as it matters) different, because the pedestal is not the same same sort of pedestal as Mr Thompson’s (it has more of the appearance of more leaves) and the segmented part has additional protuberances. For Dr Launert the two motifs (Pineapple and Luxor) were "strikingly similar". I give this no more weight than Ms Shoeser’s views to the contrary, save that I consider that it demonstrates that my view that there is a prima facie case of copying is at least a reasonable view. Ms Schoeser is certainly justified in saying that the designer of Luxor might have got his inspiration from somewhere other than Pineapple, but that was always obvious anyway. I must certainly bear that fact in mind, but it does not explain the closeness of resemblance of the two motifs as well as copying does.

Next Dr Lawrence deployed a second expert. Dr Cooke is a course director in fabric design and has a particular expertise in fabric structure. He looked at the two fabrics and concluded that they were differently constructed. The red Pineapple fabric which was the example produced in these proceedings (though the pattern books contained different colours) was constructed with red warp and pale gold in the weft. The latter was used to constitute the detail of the pineapple by (in essence) moving the red warp to the rear of the fabric where it was desired to expose the gold detail. In contrast, Luxor was constructed with the same colour in the warp and the weft, and where it was desired to introduce a separate colour for the segments that was done by adding extra wefts at the appropriate point, which can be seen on the reverse of the cloth as a periodic strip of the contrasting colour appearing "behind" those sections of the cloth where that contrasting colour appeared. The pedestal and the leaves (or platter) section of the Luxor motif were created by revealing the weft, which had the effect of making those parts stand (or appear to stand) a little proud of the background. He sought to illustrate the differences in the design by producing magnified images of the front and reverse of each fabric. When that is done the apparent similarity of the designs is much reduced; I accept that. However, I do not consider that to be a particularly useful exercise. What the exercise carried out by Dr Cooke demonstrates is that the cloths are woven differently. The two designs are differently executed in practical terms, but that says little about whether the one is a copy of the other. A oil painting which is reproduced in pastels is nevertheless reproduced even though a blow-up of the detail of each would look rather different if blown up enough.

This brings me to the last element in Dr Lawrence’s case on copying (though she did not herself put it last), which is positive evidence as to the actual genesis of the Luxor design. I have found it a curious feature of this case that much effort has been put into demonstrating what the source or inspiration of Luxor might have been, but surprisingly little has been put into getting evidence of what it actually was, and how the design came about. A study of the evidence shows that direct inquiries were never made of the ostensibly most appropriate person (the apparent designer), and such information as is said to emanate from that designer is not very full or informative. In order to illustrate this I need to set out the history of how Voyage reacted when faced with an allegation of copying.

On 30^th July 2001 Theodore Goddard wrote to Voyage claiming that Luxor was apparently a reproduction of Pineapple, and saying that Voyage’s "unauthorised manufacture (or authorisation thereof), offer for sale and sale" of Luxor was an infringement, and offered to accept undertakings restraining those activities. This is a wrapped up allegation, alleging primary and secondary infringement. Mr Dykes thought that the emphasis was on an allegation that Voyage had itself copied, and I can see why he would have thought that. On 8^th August Nelson Gibb & Landa, solicitors acting for Voyage, responded that the cloth had been purchased from Sotexport, who had run the design for 6-7 years, and that that mill would respond to the allegations when it reopened on 27^th August. The letter also disputed the allegations of similarity. On 16^th August Theodore Goddard invited Voyage to provide evidence of innocent purchase, and indicated that Nouveau would not commence proceedings until Sotexport had responded. On 27^th August Sotexport sent a fax to Voyage saying:

On 28^th August Levy & McRae replaced Nelson Gibb & Landa as solicitors acting for Voyage. They indicated that they were "expecting a written response from the supplier, dealing particularly with the design and the dating of the design." Over a month later, on 4^th October, Levy & McRae wrote again saying:

The "Design No MA 538" referred to in that letter is what I have called the "schematic" above. It is a one page document. The top one-third is taken up with a repeated motif which is a block version representing the Luxor motif, but it is not a drawing – it is a technical drawing designed to show each point at which the weft crosses the warp in order to produce the picture. Hence the "blocky" appearance. The motif in this form is repeated twice on each of four rows. To the right of the first row is written, in manuscript, MA538, but the numerals are struck through and the numbers "539" (apparently in a different hand) are written in by the side. The middle third of the page is blank. The bottom third is a table for design MA 538, with Duebi’s name and describing the client as Sotexport. Below that line there are then instructions for weaving – such things as the wefts and warps per centimetre. I shall refer to this detail below. Dr Cooke told me, and I accept, that the production of the schematic would usually be the second stage in a design process. There would often, but not always, be a first stage at which a design sketch is drawn, either on paper or directly on to a computer via a CAD package. From this design the block drawing would be produced for technical purposes, and the information from that drawing would be translated into computer readable form (originally punch cards, now disks) so that computerised instructions can then be given to the loom in order for the weaving to take place. Dr Cooke told me that the first stage would usually be a sketch, but in the case of a simple design the designer might go straight to the schematic stage.

I have referred above to a Duebi invoice. This invoice was dated 28^th February 1999. The relevant part reads as follows (in the finally agreed translation, prepared at the behest of the defendants):

Having received the schematic, on 22^nd October Theodore Goddard asked Levy & McRae for a copy of the design drawing which (it is to be inferred) they believed underlay the schematic, asked what Duebi was, asked whether the design was commissioned (albeit not using that word) or independently designed and asked for details of the date of creation of the design by the design studio. On 29^th October Mr Marco Massi of Sotexport faxed the invoices and schematic to Voyage again, under cover of a note which said:

Mr Dykes was himself apparently getting frustrated with the lack of information because on 16^th November he faxed the managing director of Sotexport, pointing out that there was an allegation of copying and saying:

That was apparently followed by a conversation between Mr Gillies and Gabriella Garducci, which was in turn followed by a letter from the former to the latter dated 23^rd November in which the allegation of copying is spelt out, and he asked for details of the relationship between Duebi and Sotexport in general and in relation to the Luxor design. He asked for examples of similar designs in the Italian marketplace and ended by requiring consent to approach Duebi direct to request further information in connection with the genesis of the design. I am not sure why it was thought that consent was required in the circumstances, but in any event it was obviously very sensible to try to approach Duebi. They were the people who (on the information that Voyage was getting) had generated the design, and who would be best placed to squash the allegation of copying if it were untrue. Unfortunately this was never followed up. The request for consent was not responded to, consent was not given and Levy & McRae never followed this up or contacted Duebi direct. Mr Gillies was asked why that was. His answers were confusing and hard to understand. He seemed to be saying that at the end of the day they had a channel of communication through Sotexport, that they thought the focus of the claim was one of primary infringement, that they had "supportive" advice from counsel, nothing seemed to satisfy Theodore Goddard, and they were worried as to where to draw the line on costs. I find this very unconvincing.

However, it is not quite the end of the story so far as contacts with Duebi are concerned. In supplemental oral evidence in chief, Mr Dykes said that he had managed to speak to Sr Belli of Duebi about 5 weeks before the trial started. He had previously tried to speak to him but had not been put through. On this occasion Sr Belli said he could not speak to Mr Dykes because he was not his client, and he asked if Mr Dykes had got the information several years ago from Sotexport as to sources; and he then said (quoting Mr Dykes) "Well, if you have that, you have the design document and you have the invoice, that should be enough." If accurately reported, that is a strange response from a man who presumably knows that his studio is being accused of copying. More unsatisfactorily, the fact that contact was made demonstrates that Voyage was still aware of the desirability of getting information from the designer, and it makes it even stranger that Levy & McRae did not seek to go direct. It is also odd, and may reflect on the credibility of the report of the conversation, that this material came out in oral evidence in chief when Mr Dykes had signed a second witness statement just 3 weeks before the trial without mentioning it there.

Taking up the chronology again, on 27^th November Sotexport told Levy & McRae that they were working on Levy & McRae’s fax and planned to send documents in 10 days. The design studio was said to need more time. On 12^th December Sotexport sent a fax to Voyage in the following terms:

On 19^th December 2001 Italian lawyers acting for Sotexport started to correspond. They stated that the copyright claim was groundless because the pattern was unoriginal, but nonetheless indicated a willingness to co-operate and to provide all documents which might be useful to the defence. Mr Gillies responded the next day by e-mail, asking for details as to when the design was created, was it registered or subject to copyright and whether there were any design drawings to support the position that the design studio created the design, and further asking for an urgent response. The response came on 4^th February 2002. The explanation given in that letter was:

A further tweak to the origination came to light on 19^th March 2003 when Mr Bruno Mazzoni of Sotexport sent a letter to Mr Dykes saying that Luxor was "made roughly in spring ‘98 from the company Magi in Montemurlo by his owner Mr Marco Massi on behalf of Sotexport. In the same year Sotexport took over Magi and Mr Massi became a partner of Sotexport."

In the course of these proceedings Voyage joined Sotexport as part 20 defendants. In their Part 20 Defence Sotexport denied copying and, inter alia, repeated the allegation that the design was commissioned on the basis of inspiration drawn from page 108 of the V&A book referred to above. However, Sotexport did not participate further in the action. Disclosure was not given by them (despite an order to that effect) and Mr Dykes told me that by spring of last year they did not seem to be trading. One of the former directors of Sotexport, Mr Bruno Mazzoni, provided a witness statement for the defendants (adduced under the Civil Evidence Act, without cross-examination), in which he refers to the takeover of Magi by Sotexport, and says that prior to the takeover the Luxor design was offered to Sotexport by Sr Massi. Apart from that, he sheds no light on the origination of the design. Two other Italian witnesses gave evidence by witness statement, but neither was involved with Sotexport or Luxor.

Before turning to consider the evidential effect of this story, I need to pick up again the illegible designs sent to Voyage in December 2001. Some time later Mr Dykes saw legible versions when, on a visit to London for other purposes, he went to the V&A. I have now seen legible copies of the relevant pages. The first page is a picture of a section of yellow cloth. There is the repeated motif that I have described. That might have inspired the notion of a repeated motif, but it cannot have been much of an inspiration for the Luxor motif, which is entirely different. Round the border there are three alternating motifs. One is an elaborately drawn pineapple, or perhaps artichoke, with elaborate multi-foil leaves at one end and stylised leaves cum roots at the other. The second is a stylised plant with a sort of leafy pedestal, two leaves arching slightly out in the manner of the two Luxor outer leaves and three symmetrical flower shapes, one vertical and one each side arching away from it. The third is a sort of curved wreath with a central vertical element. It is clear that this third element cannot have inspired Luxor. Quite how the other two can have inspired it is not at all apparent either, without an explanation from the designer or commissioner. Ms Schoeser thought that the flower motif might have been the inspiration, but that seems to me to be speculation. Accordingly, on the evidence, it is very difficult if not impossible to see where the inspiration came from if it came from this document. The second sheet of the fax contains 8 panels of designs. Only one could conceivably have been inspirational, it seems to me – the others (one leaves, the others stripes) have no apparent connection. The only candidate shows a repeated small motif comprising what looks like a small vertical flower with a leaf at about 60 degrees on each side, all emanating from a small sort of root ball. I can see how that might have formed some sort of part of the inspirational process, but how it marries with the inspiration from the other design I cannot see. One needs the designer for that purpose, and from the designer there has been a resounding silence. I would add that there was a certain amount of cross-examination as to whether a half pineapple design appearing on page 109 of the first book could have been the inspiration, but I regard that as being irrelevant because it was page 108, not page 109, that was proffered by Sotexport.

Dr Lawrence submits that if there is an inference of copying (which she denies, but which says must be weak if it exists at all) then this evidence is sufficient to rebut it. Language difficulties, and an understandable reluctance of Duebi to put itself out to help the defendants, explains why more evidence has not been obtained, and (contrary to the submissions of Mr Burkill) the documents tell a consistent story. That story is plausible, and is sufficient to rebut any weak inference of copying that might otherwise exist.

I am afraid I disagree with that. The evidence contains inconsistencies and all sorts of unexplained holes. If the design was commissioned by Magi, why was that not said at the outset? – Sr Massi must have known. Yet the concept of commissioning did not appear until well into the correspondence with Sotexport. Why was Sotexport, not Magi, invoiced for the design and the disk if Magi commissioned the design originally? The final version of events was that Duebi was provided with the two designs for the purpose of the commission – if that were true then Sotexport would have been aware of that from the outset, and those pages from books could have been provided earlier and without reference to Duebi. The two pages are themselves not obvious as sources for the design. Then presumably the process of commissioning would require some interaction between commissioner and designer to explain the needs, to make proposals and to prepare and perhaps discuss some drafts – I do not think it likely that there was one communication from Magi (if that was the commissioner), referring to or sending the V&A designs, and that the only thing that happened was the provision of the sketch and schematic. Yet there is no indication at all of any such communications. It appears that Sr Massi has never been approached for information – presumably he could have easily confirmed the source of the design if asked. The same applies to Sr Belli of Duebi. The absence of assistance from him is, to my eyes, a glaring omission in the evidence one would expect to see. Dr Cooke told me that he would expect that a respectable Italian design house like Duebi would think it damaging to provide evidence that it did not copy. I do not follow that. There may be times when a dignified silence is appropriate and understandable, but being accused of infringing copyright does not appear to me to be one of them. In short, the evidence portrays a story that develops with unexplained inconsistencies, that does not develop in the way one would expect if the story was as it finally settled down to be, and in which there is an unexplained absence of evidence from those who could, if there is an innocent explanation, provide it. The absence of that evidence is even more striking bearing in mind the lengths to which the defendants went in this case to suggest hypothetical sources for Luxor. If there was a proper, non-infringing, source, then there were easier ways of going about proving it than that.

I therefore consider that there is insufficient direct evidence of the actual source of Luxor to rebut the inference of copying that I would otherwise make. The defendants have only scratched the surface of how the design came about, and there is no good explanation of why they have not dug deeper or been able to do better.

Before leaving this topic I need to revert to two aspects of the technical sheet sent by Duebi to Sotexport.

The claimant sought to demonstrate similarity by superimposing a scaled up version of the block drawing on to the Pineapple motif to show how similar they were. I did not get any assistance from this. I accept Dr Cooke’s evidence that that exercise was inappropriate because the technical drawing was different in kind to the Pineapple motif.

The technical sheet contained instructions for setting up the loom in terms of warp and wefts per centimetre. The figures given in that document for wefts per centimetre were not those ultimately appearing in the cloth. I need not set out the figures here, but it is sufficient to say that if the original figures on the sheet had been adhered to, the Luxor motif would have appeared less "squashed", and the height repeat of the motif would have been virtually the same as the height repeat of the Pineapple motif. That factor removes one of the dissimilarities between the fabrics, which has to be taken into account in the overall assessment of similarities and dissimilarities when assessing whether there is likely to have been copying or not.

Finally, on the question of copying and rebutting inferences, I should record that as well as considering the evidence of the defendants against copying, I have not only adopted a stage by stage process of measuring the evidence against the inference, I have also revisited the point and considered the evidence as a whole. In particular I have considered the availability of historical ideas and designs as part of the background to considering whether an inference of copying should be drawn from a comparison of the two designs. Even doing that exercise, and viewing the defendants’ evidence in toto, I do not think that the inference of copying is rebutted. I consider that what was copied was the Pineapple motif, leading to indirect copying of Mr Thompson’s drawings, and leading also to copying of Gratry’s drawings with their small differences (principally the dots in the segments and elsewhere, and the divided middle leaf).

I believe I can deal with this shortly. I formed my view of similarity on the basis of the similarity between the motifs, repeated across the width of the cloth. So far as the motif is concerned, bearing in mind the scale of similarity, a finding that a substantial part of it has been copied is inevitable, as is reflected in Designers’ Guild. Lord Scott’s test – "Has the infringer incorporated a substantial part of the independent skill and labour contributed by the original author in creating the copyright work" (see para 64) - is fulfilled.

Nouveau’s original case was that Voyage, through Mr Dykes, knew or had reason to believe that Luxor was an infringing copy more or less when he bought it. However, by the time of final speeches it had moderated its position. It no longer put its case on actual knowledge, and confined itself to his having reason to believe. They said that he was put on notice by the letter before action, and once sufficient time had passed to enable him to evaluate Nouveau’s claims then from that point he had reason to believe that he had been importing and selling infringing copies so as to make him liable under sections 22 and 23 of the 1988 Act, which I have set out above.

The precise meaning of this "reason to believe" test is still the subject of some doubt. In LA Gear Inc v Hi-Tec Sports plc[1992] FSR 121 at 129 Morritt J said:

The first Mr Dykes knew of the claim to copyright was the letter before action. In that letter the genesis of Pineapple was described in general terms, and a copy of the fabric and some of the relevant drawings (including the relevant one but also including one for wallpaper, which was slightly different) were enclosed. After a reasonable time for consideration, that letter would, in my view, give Mr Dykes reason to believe that Mr Thompson was relying on a copyright work. Dr Lawrence said that that letter gave insufficient details of the design process to enable Mr Dykes to reach that conclusion, but I do not agree. It is true that some of the detail of that process appeared only in a late witness statement, but I do not think that a defendant should necessarily expect that sort of detail to be made apparent to him from the outset if he is to be made liable under this head. The letter made it clear that the design was "an original design which was created without reference to any historical designs or any designs in the public domain". It also gave appropriate details of Mr Thompson’s employment. When those elements are put together with the similarities in design which I have said give rise to a prima facie inference of copying, Mr Dykes then has to evaluate those facts and carry out such other researches as seem to be appropriate. What Mr Dykes could not be expected to have known at this stage was whether there was a good answer to the charge of copying. That answer could be expected to lie in Italy.

What he did was sensible – he approached his supplier for an explanation and information. He cannot be expected to have completed his process of evaluation until he got a response from them. The history of the matter appears above. There was difficulty in getting information out of Sotexport, and in my view while such difficulties were ongoing Mr Dykes cannot be said to have acquired reason to believe (as opposed to reason to suspect) that Luxor was an infringing copy. In mid-September Voyage got the schematic and the invoices. Its solicitors were corresponding with Sotexport, but the terms of that correspondence are not known. By 16^th November Mr Dykes was aware that what he had received (the invoice and the schematic) was not enough and that it was necessary for the designer to prove the source. He was right about that, and his fax of that date went on to say:

Dr Lawrence sought to say that other elements were in play which militated against this conclusion. There were, she said, allegations of primary infringement which Mr Dykes knew to be untrue. I accept that, but I do not see how this impacts on whether he had reason to believe that Luxor was an infringing copy made by others. It is quite plain from his own faxes that he knew the importance of that fact. She also relied on what he said about his visit to the V&A when he saw the book with the page 108 design. This took place "a few months" after the illegible fax from Sotexport. On that occasion, he said, he saw the opposite page with its half-pineapple, and "I was convinced that this was the source". I am afraid that I do not accept this evidence fully at face value. The particular design had never been identified by the Italian parties as the source of the Luxor design at any stage in the correspondence, or indeed at any point down to today’s date. That makes it a very strange conclusion for Mr Dykes, who is an intelligent man, to come to. Furthermore, it is striking that, having had this apparent revelation, he never did anything with it. He never asked Sotexport if they, or Duebi, were mistaken, and he never asked his lawyers to take the matter up with them. In particular, no reference is made to it in his two witness statements, despite the fact that between them they deal with possible sources and his belief as to infringement. I fear that he has been the victim of some of the wishful thinking that sometimes attends the giving of evidence. I think that he knew the Italian route was most unlikely to bear fruit once he had no response to his complaints about the quality of the faxed designs. That may explain why he apparently took no steps to get hold of the book himself, or to instruct his solicitors to get it.

In the circumstances I think that Mr Dykes had reason to believe that there had been infringement at the latest by the date of receipt of the Italian lawyers’ letter of 4^th February 2002 – say, 8^th February (which was the end of that week). In a letter 2 days later to Theodore Goddard, Levy & McRae comment that the Italian letter "does not answer all of the questions posed by counsel". By this time, at the latest, it was apparent that the important questions were being not addressed, and that it was unlikely that they would be addressed so as to give favourable answers. That is what gave Mr Dykes reason to believe that they were infringing copies.

I now have to answer the same question in relation to Dunelm. That company was far less active. It had received a letter before action in the same form as that sent to Voyage. Its initial response on 10^th August was to refer Theodore Goddard back to Voyage, denying awareness of infringements. When pursued on 24^th October 2001, it responded on 29^th October by saying that it had thought the matter to be closed "as I have received no instructions from Voyage to say otherwise." It went on to say: "Dunelm will not place any further orders for or make any further sales of the article when instructed by Voyage, our supplier, that the item we are selling does in fact infringe copyright laws. Now that you have all the information required, I will ask you to refer all other correspondence direct to Voyage as this matter is with them and not with Dunelm." In response, Theodore Goddard asked some further questions on 23^rd November, and re-asserted the copyright claim but without giving any further details. There was no further contact with Theodore Goddard until a warning that proceedings would be issued, on 12th March 2002. In these proceedings Dunelm instructed the same solicitors as Voyage, and Dr Lawrence appeared for both defendants, but no Dunelm witness was called to give evidence.

Dunelm’s position is therefore that it apparently carried out no researches and relied on Voyage to tell it what to do. The only information I have as to what else they might have known is a statement in Mr Dykes’ cross-examination that "they regularly asked me what is happening". It is not clear how regularly, when or what they were told – the matter was not pursued with Mr Dykes in cross-examination beyond that sentence. I therefore do not know from the evidence whether or to what extent they were kept abreast of the results of Voyage’s inquiries. However, Dunelm has not given evidence that it was ignorant or mis-informed by Mr Dykes, or that it had received any information which would have enabled it to form the justifiable view that Luxor was not an infringing copy. Accordingly, I am prepared to find that they carried out no evaluation of their own, or that they evaluated (or had the opportunity of evaluating) on the basis of some or all of the material that was emerging from Italy as they were informed of it by Mr Dykes. On the first of those hypotheses, I am prepared to decide that a defendant who receives a claim that he is indirectly infringing copyright, and who therefore is a person who has reason to suspect, is capable of becoming a person with reason to believe if he carries out no sensible inquiries, and does absolutely nothing in the face of continued assertions of the copyright by the owner, though much will depend on the facts of the case. If Dunelm made no inquiries and performed no evaluation, then in the circumstances of this case they had nothing with which to rebut the prima facie good claims of Nouveau, and they acquired reason to believe that there were possessing and selling infringing copies. In the case of such a person one might be justified in finding an earlier date for their arriving at that date than the date that I have attributed to Voyage, but Mr Burkill did not press for an earlier date, and on this hypothesis (that is to say, they made no inquiries and were not informed by Mr Dykes) I will therefore find that they acquired their reason to believe by 8^th February 2002. If they were being kept informed by Mr Dykes of what he was discovering, then there is an even stronger reason for equating those dates. Accordingly, although the evidence on this point is somewhat unsatisfactory, I find that Dunelm acquired reason to believe that they possessed or were selling infringing copies (if they continued to sell them) on that date.

I therefore find that Voyage and Dunelm have been guilty of infringement or a threatened infringement of the claimant’s copyrights. It has been agreed that damages (including any additional damages) will be determined on a separate inquiry, so I need say nothing about them. I shall grant such injunctive and other relief as appears to be appropriate after further argument.