CH 1997 S No. 6642
Neutral Citation Number:[1998] EWHC Ch 263
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
Date: Friday, 5th November 1999

Before:
MR. N. UNDERHILL QC
(Sitting as a Deputy Judge of the Chancery Division)
- - - - - - - - - - - - - - - - - - - - -
Between

	SCHOLES WINDOWS LIMITED	Claimant	
	v.		
	MAGNET LIMITED	Defendant	
- - - - - - - - - - - - - - - - - - - - -
(Computer-aided transcript of the Stenograph Notes
of Marten Walsh Cherer Limited, Midway House
27/29 Cursitor Street, London EC4A 1LT
Telephone Number 0171 405 5010.  Fax Number 0171 405 5026)
- - - - - - - - - - - - - - - - - - - - -
MR. MICHAEL SILVERLEAF QC and DR. HEATHER LAWRENCE (instructed by Messrs Lupton Fawcett, Leeds) appeared on behalf of the
Claimant

MR. ANTONY WATSON QC and MR. COLIN BIRSS (instructed by Messrs Martineau Johnson, Birmingham) appeared on behalf of the
Defendant
- - - - - - - - - - - - - - - - - - - - -
JUDGMENT

<P><B>THE DEPUTY JUDGE:</B>   In this action, the claimant (Scholes Windows Limited) to which I shall refer as Scholes, claims that the defendant (Magnet Limited) has infringed its unregistered design right in the design of a feature of a U-PVC window known as the horn.  The decisive facts in the case are within a very short compass and I can accordingly give the background fairly summarily.</P>

<P>The claimant is a company wholly owned by its founder, Mr. Malcolm Scholes.  Mr. Scholes is a designer with a long experience in window and sliding door design and manufacture. In the first part of his career, he worked principally with aluminium products.  At the beginning of the 1980s, he moved into a material then called PVC-U, now called U-PVC -- which I shall refer to, to avoid this complication, simply as PVC -- and founded the claimant company.  It was his intention to improve the look and quality of PVC as a material for window construction, and he researched and designed a profile which would enable slimmer and more attractive products to be created than were available at that point. Mr. Scholes, who gave evidence before me, is evidently a very talented designer and a man of refined visual taste.  The business has, as I understand it, been successful over the years.</P>

<P>Scholes's products were initially sold entirely to the replacement window market, but he was keen to sell into the  new build market where developers were increasingly willing to use PVC because of its low maintenance features.  However, architects, developers and planning officials often required a more period look for windows.  In order to meet those requirements, and I think I can say in conformity with his own taste, Mr. Scholes designed and put on the market a window known as Nostalgia.  This was a unit with a fixed lower light and a top hinged casement as the upper light.  It was intended to evoke, at least to the casual observer, a traditional Victorian sash window.  This was done by various features which I need not enumerate; but one important feature was the continuation of the two side members of the upper casement, technically known as the stiles, below the level of the bottom rail so as to form two short projections.  These mimic the horns which are typically found on the upper light of Victorian sash windows, where their purpose was functional, primarily to strengthen the lower joints of the frame but also to prevent the frame, when fully open, from becoming impossible to reach and close because of being hidden behind the lower frame.</P>

<P>Victorian window horns are almost invariably given a decorative shape of some kind.  There is an enormous variety of such shapes.  The horn on the Nostalgia window is also decoratively shaped.  I shall describe the shape in more detail presently. </P>

<P>The Nostalgia window was exhibited at the 1995 Glassex exhibition, which is the principal trade show for window manufacturers, and the evidence is that it attracted a lot of favourable attention.</P>

<P>The idea of using a horn on top opening casement windows, in order to give a period feel, did not originate with Mr. Scholes.  The evidence is that it had been used by the manufacturers of timber mock sash windows since at least 1990; and manufacturers of PVC windows appear to have started to use so-called plant-on horns, that is to say horns separately made in aluminium or in another material and screwed on to the bottom of the PVC window, from at least 1992.  So far as PVC windows were concerned, the Scholes Nostalgia window was innovative -- though not in any respect directly material to this claim -- by being integral to the window as manufactured.</P>

<P>The defendants also manufacture PVC windows.  In 1996 they too put on the market a PVC mock sash window, that is a window whose upper light was a top-opening casement, with decorative horns, intended to evoke the look of a Victorian sash window.  There is no doubt that the shape of the horns bears a very close resemblance to the shape of those on the Nostalgia window.  Scholes were convinced that the similarities were the result of copying and in due course they issued these proceedings claiming infringement.  It emerged at  an early stage that Magnet's design had indeed been influenced by the claimant's, to use a neutral term, since one of their managers, Mr. Wolstenholme, had in April 1996 seen and photographed a Nostalgia window and had given the photograph to another manager, Mr. Asher, to show him the kind of window that the defendant might make.  I will have to return to the question of precisely what use was made of that photograph in due course.</P>

<P>Against that background, I can turn to the issues. Design right is the creature of part III of the Copyright, Designs and Patents Act 1988.  The material parts of section 213 of the Act are as follows:</P>

<BLOCKQUOTE>"(1) Design right is a property right which subsists in accordance with this Part in an original design.</BLOCKQUOTE></BLOCKQUOTE>

<BLOCKQUOTE>"(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.</BLOCKQUOTE>

<BLOCKQUOTE>"(3) Design right does not subsist in -</BLOCKQUOTE>

<BLOCKQUOTE>"(a) a method or principle of construction,</BLOCKQUOTE>

<BLOCKQUOTE>"(b) features of shape or configuration of an article which -</BLOCKQUOTE>

<BLOCKQUOTE>"(i) enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function, or</BLOCKQUOTE>

<BLOCKQUOTE>"(ii)  are dependent upon the appearance of another  article of which the article is intended by the designer to form an integral part, or  "(c) 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."</BLOCKQUOTE>

<P>The origins of the enactment of these provisions are helpfully reviewed in the judgment of Mummery LJ in Farmers Build Limited v. Carier Bulk Handling Materials Limited [1999] RPC 461, and I need not set out that history here.</P>

<P>The starting point in any claim must be to identify with precision the design which the claimant alleges was infringed.  Paragraph 2 of the re-amended statement of claim identifies the design as "the horn for the plaintiff's Nostalgia windows", first recorded in drawing number D1910/1 dated 20th July 1994, which appears in the trial bundle at E45, but also shown in substantially identical form in the CAD drawings 1361/0 and 1361/1 at E24 and E25 of the bundle. These later drawings embody the essentials of the design rather more clearly than the earlier drawing at E45; and I will attach E25, on which Mr. Silverleaf specifically relied in opening, to this judgment.</P>

<P>The design there described constitutes the contour of the bottom and the inner edge of the horn.  The horn is cut from Scholes's standard 42 mm profile.  (I should say that  "profile" is the term used for an extruded length of PVC. The profiles used in windows are complex, with both some external features and an internal structure of hollow chambers.  Designs of the Scholes and Magnet profiles appear in the papers and I need not attempt to describe them here.) The cutting of the profile exposes the hollow inside which then has to be covered by a fitted plastic end-cap in the finished product.  The end-cap will of course have the identical contour to the cut shape.  Some of the drawings in the papers are in fact of the end-cap rather than the horn itself, but that is a distinction without a relevant difference.</P>

<P>The contour of the bottom and inner edge of the Nostalgia horn has five components:  (1) a 6.5 mm straight horizontal line followed by (2) an upward curve consisting of a complete quadrant with a radius of 15.5 mm followed by (3) a 10.5 mm straight vertical line followed by (4) a further upward curve with a radius of 16 mm which is less than a full quadrant -- it is in fact approximately 75 degrees -- followed by (5) a smaller upward curve with a radius of 5.5 mm returning to the vertical:  this too is not a full quadrant.</P>

<P>The contour continues with a vertical line of 9.5 mm followed by a 2 mm outward step which was designed to facilitate a good grip for the end cap.  When the cap is in place its width effectively cancels out the visual effect of  the step.  Mr. Silverleaf expressly disclaims those elements as part of the design which he alleges has been infringed, and Mr. Watson does not dispute his right to do so.</P>

<P>The characteristic part of the design has been described as a lazy S shape.  That is not entirely right since it has in fact three curves rather than two; but since the top curve is of a very small radius and could easily be overlooked on a casual inspection, the description as an S shape is not entirely inappropriate.</P>

<P>It is the shape so described which constitutes the design which the claimant alleges has been infringed.</P>

<P>The issues in relation to that design are as follows:</P>

<BLOCKQUOTE>(1) Is it original in what I will call the old copyright sense?</BLOCKQUOTE>

<BLOCKQUOTE>(2) If it is original is it nevertheless "commonplace" within the meaning of section 213(4) of the Act.</BLOCKQUOTE>

<BLOCKQUOTE>(3) if it is both original and not commonplace, so that a design right subsists, has that right been infringed by the defendant?  Section 226 of the Act gives the owner of design right the exclusive right to reproduce the design for commercial purposes.  Subsection (1) states:</BLOCKQUOTE>

<BLOCKQUOTE>"The owner of design right in a design has the exclusive right to reproduce the design for commercial purposes:</BLOCKQUOTE>

<BLOCKQUOTE>"(a) by making articles to that design, or</BLOCKQUOTE>

<BLOCKQUOTE>"(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."</BLOCKQUOTE>

<P>In shorthand the question is:  Did Magnet copy the design?</P>

<BLOCKQUOTE>(4) Does the claimant have title to the design?</BLOCKQUOTE>

<P>If those issues are answered in the claimant's favour, I am told that no issue arises for my decision as regards relief.  It is agreed that there should in that case be an injunction and an inquiry as to damages but I am asked to decide whether such infringement as I find is flagrant within the meaning of section 229(3) so as to entitle the claimant to additional damages.</P>

<P>For the avoidance of doubt the pleaded defences in paragraph 4 of the defence have been abandoned.</P>

<P>Issue 1:  Originality.</P>

<P>By the time of closing submissions, Mr. Watson's contention that the claimant had not proved that the Nostalgia design was original in a copyright sense had become very faint, and I can deal with it shortly.</P>

<P>The oral evidence of Mr. Scholes on this issue, supplemented by that of Mr. Ray Smith, one of the draftsmen  employed by the claimant, can be summarized as follows.  From about January 1992 he had been thinking about incorporating an integral horn on a top opening casement window.  His working notebooks contain sketches of and for such horns, or windows on which they appear.  Copies of the relevant pages are in the trial bundle as X1.  At some point in 1993 he made a rough model of such a window in the Scholes factory.  On 4th March 1994 he made a series of outline sketches in his notebook of various horn designs.  Shortly afterwards he showed that page to Mr. Smith and asked him to work up one of the designs into a full drawing.  Mr. Smith did so.  That drawing has not survived but a later one incorporating some minor changes has done so and is dated 14th April 1994.  It is at E21 of the bundle.  Mr. Scholes rejected that design and asked for something else.  The job was passed to another designer in the team, Mr. Gray, who over the following weeks produced a series of outline drawings and eventually the worked-up drawing dated 20th July 1994 (E45) which is the first record of the pleaded design.</P>

<P>The exact detail of the progression from Mr. Smith's rejected drawing to Mr. Gray's drawing of 20th July 1994 cannot be recaptured, but I have no doubt that it was driven by Mr. Scholes.  His evidence is that he actively directs and supervises the design work in his office generally and will certainly have done so in relation to this project.  He visits  the draftsmen at work frequently and asks for modifications and alterations as they go.  He attaches great importance to the detail of visual design and is a perfectionist.  He will, metaphorically if not literally, have stood over Mr. Gray until he got the design right.  That evidence was barely challenged and was wholly convincing.</P>

<P>I am quite satisfied that the final design was the product of collaboration between Mr. Scholes and Mr. Gray with Mr. Scholes being the directing mind and -- I would find if necessary -- the designer within the meaning of section 214(1).  The surviving drawings show that a great deal of thought and care went into the process.</P>

<P>Mr. Watson's point in the end came down to this, that the evidence which I have summarized was so inadequately foreshadowed in the pleadings and witness statements -- and was indeed at various points quite inconsistent with them -- and that the story now told was still so short on firm detail, particularly in the absence of Mr. Gray as a witness, that I could not be satisfied that the work done really was original.</P>

<P>There is nothing in this point.  As I have indicated, I accept the evidence of Mr. Scholes and Mr. Smith as to the design process.  The fact that every detail cannot now be remembered or reconstructed in detail is unsurprising and insignificant. </P>

<P>It is indeed regrettable and rather surprising that the full story, as told by Mr. Scholes and Mr. Smith, was not properly presented in the pleadings or the witness statements.  I had to give leave to reamend the statement of claim on the second day of the trial.  But since the evidence finally given was entirely convincing, the deficiencies in the claimant's pre-trial preparation are a matter of history.</P>

<P>Issue 2: Commonplaceness.</P>

<P>A design which is prima facie original, that is to say original in the old copyright sense, is nevertheless not treated as original for the purpose of the Act if it is commonplace in the design field in question at the time of its creation:  see subsection (4) of section 213.  The time of the creation of the Nostalgia design is July 1994.</P>

<P>I have heard considerable argument on the question of what is the relevant design field.  Mr. Watson says that it is window design simpliciter.  Mr. Silverleaf initially said that it was PVC window design, but in closing submissions he conceded that it could extend to mock sash window design in any material, which in practice means timber as well as PVC. In opening he pointed out that the very different characteristics of the various materials from which windows are commonly manufactured -- timber, steel, aluminium and PVC -- mean that the designer is presented with very different design problems, which may lead to very different solutions.  That is true as a generalization, but, on the evidence, it has no application to the particular design with which we are concerned here.  The design alleged to have been infringed is a purely decorative shape without any functional characteristic.  It was designed principally with a view to aesthetic appeal rather than to accommodating any particular characteristic of PVC as a material.  Indeed, as Mr. Silverleaf's concession recognizes, the design could equally have been created in timber; and of course the whole underlying concept of a decorative horn on a window of this type is to evoke the appearance of what were originally timber windows.  Mr. Scholes said in evidence that at least part of his consideration in arriving at the right design was something that looked appropriate to the material, but I did not understand him to be referring to any difficulty of working PVC as opposed to wood.  The position might indeed be different if we were dealing with a feature of a window in relation to whose design the difference of materials imposed substantially different constraints, but in my judgment on the evidence that is not so here.</P>

<P>Accordingly, the question is: was the design of the Nostalgia horn commonplace in the field of window design in July 1994?  It is important to bear in mind that the question relates to that actual design.  It is not, for example, whether simply the use of horns on windows, or on top-opening  casement windows, was commonplace at that time.</P>

<P>As to the meaning of the term "commonplace", I have the benefit of the judgment of Mummery LJ in the Farmers Build case, to which I have already referred.  At page 482 he gives guidance as to the proper approach of a court to this issue in five numbered steps.  The first two steps are concerned with the prior and distinct question whether the design is original at all in the copyright sense.  I pick the passage up at step 3:</P>

<BLOCKQUOTE>"If the court is satisfied that the design has not been copied from an earlier design, then it is 'original' in the 'copyright sense'.  The court then has to decide whether it is 'commonplace'.  For that purpose it is necessary to ascertain how similar that design is to the design of similar articles in the same field of design made by persons other than the parties or persons unconnected with the parties.</BLOCKQUOTE>

<BLOCKQUOTE>"(4)  This comparative exercise must be conducted objectively and in the light of the evidence, including evidence from experts in the relevant field pointing out the similarities and the differences, and explaining the significance of them.  In the end, however, it is for the court and not for the witnesses, expert or otherwise, to decide whether the design is commonplace.  That judgment must be one of fact and degree according to the evidence in each particular case.  No amount of guidance given in this or in  any other judgment can provide the court with the answer to the particular case.  The closer the similarity of the various designs to each other, the more likely it is that the designs are commonplace, especially if there is no causal link, such as copying, which accounts for the resemblance of the compared designs.  If a number of designers working independently of one another in the same field produce very similar designs by coincidence the most likely explanation of the similarities is that there is only one way of designing that article.  In those circumstances the design in question can fairly and reasonably be described as 'commonplace'.  It would be a good reason for withholding the exclusive right to prevent the copying in the case of a design that, whether it has been copied or not, it is bound to be substantially similar to other designs in the same field.</BLOCKQUOTE>

<BLOCKQUOTE>(5)  If, however, there are aspects of the plaintiff's design of the article which are not to be found in any other design in the field in question, and those aspects are found in the defendant's design, the court would be entitled to conclude that the design in question was not 'commonplace' and that there was good reason for treating it as protected from misappropriation during the limited period laid down in the 1998 Act. That would be so, even though the design in question would not begin to satisfy any requirement of novelty in the registered designs legislation." </BLOCKQUOTE>

<P>Although that passage summarises the court's guidance, the discussion in the preceding passages is equally important, and I bear very much in mind the analysis there made of the history and purpose, so far as it can be divined, of subsection (4).  I should read in particular a passage on page 481 at line 33:  "It is agreed that 'commonplace' in section 213(4) must be given some limiting or exclusionary effect on the designs to be regarded as original.  It would be wrong to regard the concept of the 'commonplace' design as having the same effect as superficially similar concepts of intellectual property which were available for use in the context of design right, if Parliament had wished to use them.  For example, a design can only be registered if it is 'new'.  If it had been intended to impose a 'novelty' requirement for the subsistence of design right, Parliament would have had recourse to the novelty concept employed in registered designs legislation since the mid-nineteenth century.</P>

<BLOCKQUOTE>"Section 213(4) is not an indirect imposition of novelty as a condition for the subsistence of design right. In this context, commonplace does not mean 'not novel'.  It is also inappropriate to apply in this context related concepts of registered design and patent law, such as 'variants commonly used in the trade' (Section 1(4) Registered Designs Act 1949) and 'the state of the art'.   "The overall purpose of the provision was not to impose a requirement of novelty in order to secure the limited protection enjoyed by unregistered designs, but to guard against situations in which even short term protection for functional designs would create practical difficulties. Substantial similarity of design might well give rise to a suspicion and an allegation of copying in cases where substantial similarity was often not the result of copying but an inevitable consequence of the functional nature of the design.  All that is meant by 'original designs' in the context of section 213 is (a) that the design for which protection is claimed must have been originated by the designer in the sense that it is not simply a copy by him of a previous design made by someone else (like a photocopy) and</BLOCKQUOTE>

<BLOCKQUOTE>(b) that where it has not been slavishly copied from another design, it must in some respects be different from other designs, so that it can be fairly and reasonably described as not commonplace.  The context is important.  Design right, like copyright, is informally acquired and affords weaker protection, as only copying is actionable.  Copying may be inferred from proof of access to the protected work, coupled with substantial similarity.   This may lead to unfounded infringement claims in the case of functional works, which are usually bound to be substantially similar to one another.  On the other hand, a registered design, like a patent, is a  stronger right, is harder to obtain, but it is vulnerable to challenge on the ground that it is lacking in novelty and it would not be novel if it was well known and used by others. To introduce a requirement of novelty into unregistered designs would effectively remove from the limited new right a large measure of the protection that the right must have been intended to confer on designers to protect their work from plagiarism.  It cannot have been the purpose of section 213(4) to take away by one provision all the protection given by another."</BLOCKQUOTE>

<P>It must be noted that the designs with which Farmers Build was concerned were purely functional, whereas the aim of the designer of a window horn shape is principally aesthetic.  It seems to me that some of Mummery LJ's observations are less directly applicable to such a design - in particular those under head (3) on page 481 and the observations between lines 39 and 45 on page 482.  Where the only criterion of quality in a design is its visual appeal there is likely to be a much wider range of design choices and no objective way of measuring the significance of the differences between them.  There is less likely to be "only one way".  But I do not think it follows, and it was not argued before me, that the concept of commonplaceness has no application to designs whose only purpose is aesthetic:  it is simply that its application is more difficult. </P>

<P>I also have the assistance of the recent judgment of Rattee J in Round Imports v. PLM Redfearn Limited, unreported but decided on 11th January 1999, in which the issue of commonplaceness was determinative of the case.  Rattee J adopted the statement of principle in Farmers Build, but his application of those principles to the facts of the case before him offers some illustrative guidance.</P>

<P>Mr. Watson says that the design of the horns on the Nostalgia window was commonplace because the evidence shows that window horns with shapes closely similar to the claimant's design are frequently to be found.  The evidence as to this can be summarized as follows.</P>

<P>First, the defendant's expert produced photographs and sketches of a large number of Victorian window horns, taken of course from genuine sash windows, in the Brooking collection of period architectural features kept at the University of Greenwich.  The photographs were selected for the perceived similarity of the horns in them to the design of the Nostalgia horn.  Almost all of the photographs could be loosely described as shallow S shapes, with the characteristic feature being two opposite arcs of broadly similar radius.  Two have a third curve, as in the Nostalgia horn.</P>

<P>The degree of similarity between each of these horns and the Nostalgia horn varies, and it is not useful for me to attempt to find an adjective which precisely quantifies the  degree of similarity in each case.  On the one hand there is, unsurprisingly, a family resemblance:  I say unsurprisingly because Mr. Scholes' whole purpose was to evoke, though not slavishly to copy, a Victorian horn.  Also unsurprisingly, none could be described as indistinguishable or practically indistinguishable from the Scholes horn.</P>

<P>The Brooking collection is not a collection of rarities.  On the contrary, its raison d'etre is as a repository of typical architectural forms and details from the past.  I am entitled, therefore, to regard the selected horns as typical of types of horn which can still be found in situ in numerous Victorian buildings up and down the country.  It is not of course suggested that they are the only or indeed the most numerous or typical shapes.  But the evidence of Mr. White, the defendant's expert, is that they are common, and I accept that.</P>

<BLOCKQUOTE>(I should note that in looking at the Brooking collection samples, which are detached from their original frames, not all of what appears on the photographs would have been visible when the horn was part of a complete window, because part would be concealed by the sash box.  This means, essentially, that they seem rather fatter than they would do in situ, but of course the characteristic part of their shape, the decorative curve, is not affected.)</BLOCKQUOTE>

<P>Second, there are various photographs in the bundle, and  attached to the experts' reports, of miscellaneous Victorian horns photographed in situ.  Some of these are S shapes.</P>

<P>Third, there are one or two sketches of original horns in Mr. Scholes's notebook.  One at least of these is a shallow S.</P>

<P>Fourth, there are some photographs or drawings of horns manufactured in the early 1990s on timber top-opening casement windows.  These are less similar to the Nostalgia design than most of the Victorian horns in evidence.  In particular I have seen no evidence of S-shaped horns being used.</P>

<P>The conclusion which I draw from this evidence is that shallow S-shaped horn designs were common in the built environment in 1994.  They are there to be seen by anyone with eyes to see in any typical assemblage of Victorian buildings in any street or residential area.  They were designed a century or more ago but they are still current in the sense that they are there to be seen and to inform the eye of designers or of anyone else interested in what horns can look like.</P>

<P>I believe that designs of this sort do fall to be taken into account in addressing the question of commonplaceness. To take an example of a form of design that may be more commonly identified, if egg-and-dart or Greek key motifs, which can be seen on countless eighteenth-century interiors, had been wholly out of fashion in new buildings until now, I  cannot believe that any designer who created a design based closely on them (though not slavishly copied) could defend an allegation of commonplaceness simply because the designs themselves were old.</P>

<P>To say that Victorian designs of the type that I have described are common, and I would say on any ordinary use of the term commonplace, is not conclusive of the question whether this design was commonplace.  Applying the guidance in Farmers Build, what has to be considered is whether the differences between the Scholes design and the very many other broadly similar designs for window horns which I have described are sufficiently great to lift it out of the ordinary run of such designs.</P>

<P>I have come, after considerable reflection, to the conclusion that the Nostalgia design is commonplace in the statutory sense.  I wish to emphasize that that is not a judgment of its quality or of the care and effort which Mr. Scholes took in creating it.  Commonplace is not, in this context, a pejorative word.  I am also very conscious of the risk that a judge, without design expertise, may underestimate the value or significance of quite small variants within a family of designs.  In certain contexts, what may be in quantitative terms a very small shift to a line or an angle or an arc may make the difference between a design working and not working, whether the purpose of the design is functional  or aesthetic.  In such a case, a "right" design might not be commonplace because it would have something sufficiently valuable and distinctive about it when compared with the other superficially similar designs already current.</P>

<P>All that I can say is that I do not judge this to be a case of that kind.  Mr. Scholes took great care about the design of this horn, I am sure, but I believe he did so because he is a perfectionist.  I do not believe that the additional degree of elegance which he may well have achieved by his perfectionism would be of any real significance in the market to which the window was aimed, whether that is viewed as a market of individual home buyers or replacement window purchasers or the arguably more sophisticated market of developers and architects.</P>

<P>There was evidence that the Nostalgia window in general, and the integral horn feature in particular, attracted favourable attention when they were first exhibited; but there was no evidence, and it seems to me inherently unlikely, that that attention owed anything to an appreciation of the precise shape of the horn.  To put it another way, I do not believe that its appeal to the market would have been in any significant way different if Mr. Scholes had copied directly from, say, the Brooking collection a horn of broadly similar appearance to that which he in fact designed.  I do not overlook in that conclusion the evidence of Mr. Damiani of  which I was reminded by Mr. Silverleaf in closing submissions. Mr. Damiani was, at the time, the general sales manager of HIS and had been, in the past, secretary of the Plastic Windows Group of the British Plastics Federation.  He described the effect of the Scholes horn at the Glassex exhibition as being more "appealing" than anyone else's; but I understood him in context to be referring to the fact that the Scholes horn was an integral horn and not a plant-on, which was the principal respects in which the horn was innovative.</P>

<P>The approach which I have taken, and the result which it leads to, seem to me to be in accordance with the statutory purpose, as identified by Mummery LJ in Farmers Build, of preventing the creation of rights which it would be difficult to protect and enforce in practice.  Where, as must be the case in a number of fields, design history supplies a huge resource of typical designs (such as, in the architectural field, mouldings or cornices) -- most of which are freely available for copying -- it would, it seems to me, lead to real practical difficulties if the creator of a modern pastiche, only slightly different from the rest of the available bank of designs, could obtain protection in relation to it.  It would often be difficult to know whether the producer of an alleged copy had copied from a genuine original or from the claimant's pastiche, nor indeed might the copier himself always be in a position to know.  The source of the  problem is different from that considered by Mummery LJ, namely functional constraints limiting the available range of designs, but the resultant problems would be the same.</P>

<P>Issue 3: Copying.</P>

<P>There is no doubt that the design of Magnet's horn is very similar to that of the Nostalgia horn.  The similarity is, for example, much closer than that between the Nostalgia horn and any of the Victorian horns referred to earlier. However, the two are not identical.  The design of the Magnet horn, like the claimant's, can be described in five elements.</P>

<BLOCKQUOTE>(1) It starts with a straight horizontal line, 6 mm in length, as against 6.5 mm in the Scholes design.  That is followed (2) by an upward curve which is a full quadrant with a radius of 16 mm, as against 15.5 mm in the Scholes design. That is followed (3) by a vertical straight line of 12 mm, as against 10.5 mm in the Scholes design.  That is followed (4) by an upward and outward curve with a radius of 16 mm:  the radius is the same as in the Scholes design, but the arc is a full quadrant as against 75 degrees.  That is followed (5) by a further upward inward curve, with a radius of 8 mm, as against 5.5 mm on the Scholes design:  it is also again a difference that the arc is a full quadrant.</BLOCKQUOTE>

<P>There is thus in fact a difference in each component. The Magnet design is also somewhat longer, and it is necessarily wider because Magnet's standard profile is 46 mm  wide as against Scholes's 42 mm.  But these individual differences do not disguise the overall close similarity.  I attach to this judgment two helpful comparative sketches by the claimant's expert, Mr. Ratcliffe, though these are not the only comparisons that can be made and others appear in the papers.</P>

<P>The question for me is whether that close similarity is the result of copying by the defendant.  As to that, the basic factual evidence is now hardly controversial.  Here too the oral evidence, in particular of Mr. Asher, was a great deal fuller than that in the witness statements, and in places differed from it; but it was, for all practical purposes, unchallenged.  The evidence can be summarized as follows.</P>

<BLOCKQUOTE>(1) In April 1996 Mr. Wolstenholme, the site manager of the defendant's factory at Flint, was visiting a customer, Mr. Smith of David Williams Homes, and saw in his office a Scholes Nostalgia window.  The window had been supplied to David Wilson Homes for assessment by a company called HIS with which Scholes had an arrangement, and it had HIS's name on it.</BLOCKQUOTE>

<BLOCKQUOTE>(2) Mr. Smith told Mr. Wolstenholme that he and his sales director liked the look of the window and wanted to know if the defendant could supply a similar mock sash effect window.  Part of the attraction was the ovaloe beading, but part came from the use of the decorative horns.   (3) Mr. Wolstenholme said he would see what he could do, and asked to take a photograph of the window so that he could discuss it with his managing director.  He was a keen amateur photographer and had his camera with him in his car.  In fact, he took two or three photographs, though it appears that they were all from the same position and varied only in adjustments to the focusing.  The one that has survived is in the bundle at E64.  It is not a professional photograph.  The window is seen at an angle with indifferent lighting, and details of the shape and dimensions, absolute or relative, of its components are not distinguishable.</BLOCKQUOTE>

<BLOCKQUOTE>(4) Mr. Wolstenholme took the photographs back to his office and made some enquiries both with his managing director and with Mr. Asher, the site engineering manager.  It became clear that the defendants could not make beading of the kind shown, but they thought they could make a window with the horns if the cutting machine used at the factory were upgraded.  Mr. Asher saw the photographs and kept one, presumably the clearest, which is the one which has been put in evidence.</BLOCKQUOTE>

<BLOCKQUOTE>(5) Mr. Wolstenholme accepted in evidence that he asked Mr. Asher to design a horn similar to the one in the photograph.  I quote from the transcript of his evidence under cross-examination at page 319, line 10.  Mr. Silverleaf put to him:  "You instructed Mr. Asher to have the router upgraded to  enable him to produce what you describe as a similar shaped end sash profile."  Mr. Wolstenholme agreed.  Mr. Silverleaf asked:  "By that, when you are talking about the profile you mean the shape of the horn.  (A) Similar shape, yes. (Q)  You wanted him to produce a horn of a similar shape to the one on the window in your photographs. (A) Yes, I would say so. (Q)  Did you ask him to produce a horn which was the same as the one in the window or one which was different from the one on the window? (A) No.  I just asked him to produce a horn, 'See what you can do, see what you can come up with.' (Q) Essentially you asked him to copy what was in that photograph. (A) No.  I asked him to do a similar shape."  He went on to describe difficulties with what the machine could do, and I will come back to those presently.</BLOCKQUOTE>

<P>As will have appeared from that last answer, Mr. Wolstenholme made it clear that he was not really interested in the precise shape.  A little later in the transcript, on page 321, line 7, Mr. Silverleaf asked him:</P>

<BLOCKQUOTE>"You did not ask him to make a horn which was different from the horn on the window you photographed, did you? (A)  I did not really instruct him to make any particular shape.  I just said, 'We need to make an integral horn.  We just need to make an integral horn for our window'."  A little later still, at page 323, when he was asked about whether he had considered the question of copying, he said:  "I did not think we were  actually copying.  It did not even enter my mind we were copying that shape."  (6)  When Mr. Asher came to give evidence, Mr. Silverleaf asked him the series of questions which start at page 357.  He asked him to refer to a drawing which he had helpfully marked up in the course of his evidence-in-chief showing his account of how he had arrived at the design.  He said this: "Can we go back to the drawing you just produced, X3.  I just want to understand your design process.  You were shown the photographs by Mr. Wolstenholme. (A) Yes. (Q) he asked you to produce something that looked similar. (A) Yes. (Q) Your basic objective was to produce a horn shape that looked like the one in the photograph. (A) Yes. (Q) To do that you knew that what you had to do, if you look at the photograph you will find that in tab 64, we can see that it has a little flat bit.  If we start from the bottom and use what we can see on both horns that are visible, we can see it has a little flat bit at the bottom outer edge.  Then it has roughly a quadrant, then a vertical bit, then roughly a quadrant in the opposite sense. (A) I cannot see a fault there, not at the start.  It looks to me like a full curve." Mr. Silverleaf asked him to look at the right-hand horn.  He answered: "That is what I mean.  It still looks like a curve to me. (Q) You think that is a curve. (A) Yes. (Q) Let us assume a quadrant there.  So you have a quadrant at the  bottom. (A) Yes. (Q) then you have a vertical section. (A)  Yes. (Q)  Then you have a quadrant going the other way of about the same radius. (A)  Yes. (Q) Then you have a small radius going the other way on to the vertical on the inside. (A)  Yes. (Q) It was your objective to produce something like that. (A) Something similar."</BLOCKQUOTE>

<P>As one would expect with a skilful cross-examiner, that sequence of question and answer makes the claimant's case at its strongest, yet, taken in isolation, it may not give a balanced impression of how Mr. Asher proceeded.  My finding on the evidence as a whole is that his object, in accordance with his instructions from Mr. Wolstenholme, was to produce something similar to what he saw in the photograph but that he was not concerned to achieve the identical shape.  Indeed, he did not have the information to do so.  The photograph was simply not of sufficient quality.  Even if he had had precise dimensions, some adaptation would have been necessary because the PVC profile into which the design was to be cut was wider than that used by Scholes.</P>

<P>Accordingly, there could be and was no question of Mr. Asher making any sort of measured analysis of the photograph.  We know that he kept the photograph because it was found in his file and disclosed on discovery, but there is no evidence as to whether or to what extent he referred back to it after having digested the basic concept.  His evidence  was that he worked out the dimensions for himself from scratch, and the drawing I have referred to at X3 explains the way in which he did so.  He started with the 6 mm horizontal, not because there was such a line on the Scholes design (indeed he did not realize that there was) but because the edge of the profile was bevelled and he did not want to start the curve until he had got past the angle.  At the other end, he had to leave 8 mm, for structural reasons to do with the design of the profile.  That left 32 mm in the middle, which he split to get the radii of the two curves at 16 mm each.  He could not have appreciated from the photograph that one of the claimant's curves was not a full quadrant; but even if he had, the defendant's cutter would only cut full quadrants.  His evidence was that he originally did not intend to have a third curve, that is to say a third curve rounding off the final 8 mm, but in the end he decided to do so in order to avoid an awkward compound angle at the edge of the profile.  None of that evidence was challenged, and I accept it.</P>

<P>Thus, all that Mr. Asher took from the photograph is the broad look of the central section of the design, two broadly equal quadrants, or apparent quadrants, and a vertical section in between them somewhat shorter than the radius of the two quadrants.  Those features were enough to give the horn its close overall similarity to that of the Scholes design.  The fact that he had to do all the workings himself, together with  the different width of the profile, accounts for the numerous differences of detail.</P>

<P>As I have said, none of that is in dispute.  The question is: does that process constitute "copying a design so as to produce an article exactly or substantially to it", to quote the words of section 226(2) of the Act?</P>

<P>Mr. Watson says that it does not.  He contends that the undoubted use by Mr. Asher of the broad impression of the shape of the horn, which can be obtained from the photograph, constitutes only the use of an idea or concept but not of the design itself.  He emphasizes that Mr. Asher carried out his own design process from the start.  It was not, he contends, made significantly easier or more straightforward by any information gained from the photograph.  He did not in any meaningful sense appropriate Scholes's labour and skill.</P>

<P>I was attracted by those submissions, but in the end I would reject them.  The poor quality of the photograph and the limited nature of the information to be derived from it means that this case is very close to the line.  But on balance I believe that Mr. Asher did appropriate Scholes's labour and skill as regards the central features of the design, the two main curves and the intervening vertical and their relationship to one another.  For all his intervening work, it is impossible to get away from the fact that what he set out to do, and indeed achieved, was to produce a design for the  horn that looked like the horn in the photograph.  He did not have to, and did not, design the essential characteristics for himself:  he took them from the photograph.  That is, in my view, copying the design so as to produce an article substantially to that design.</P>

<P>Issue 4: Title.</P>

<P>There is uncontroverted evidence that Mr. Scholes in particular, and other members of the team involved in the design of the Nostalgia horn in general, were employees of the claimant and that the design was created in the course of that employment.  Accordingly, the claimant was the first owner of any design right in that design (see section 215 (3)).</P>

<P>Mr. Watson elicited from Mr. Scholes in evidence the fact that the registered design right in the Nostalgia window as a whole, and indeed various other registered rights or patents arising from the claimant's business, were registered in his name personally.  He asked me to infer on that basis that there is some implied agreement operating between Mr. Scholes and the claimant whereby Mr. Scholes personally acquires title to all intellectual property rights of the claimant as they come into being.  I can see no basis for any such inference and I decline to draw it.</P>

<P>Issue: 5:  Flagrancy.</P>

<P>If I had found that the defendant had infringed a design right belonging to the claimant in the Nostalgia horn, I would  not have found the infringement to be flagrant within the meaning of subsection (3) in section 229.  I have already referred to the evidence of Mr. Wolstenholme and Mr. Asher that they did not believe they were copying anything.  In the circumstances of this case, I regard that belief as reasonable.  On that basis it is unnecessary to enter into any refined discussion of the meaning of flagrant:  it is plainly not possible to bring their conduct within any possible meaning of the term.</P>

<P>Accordingly, I find for the defendant on the basis of the commonplaceness issue and I dismiss the action.</P>

<P>I should only add that I am most grateful to counsel for their very clear and helpful submissions. 16 18 20 22 24 26 </P>

<P><B>MR. BIRSS:</B>   I would ask my Lord to dismiss the action with costs.  I should have thought, in general terms, my learned friend would not be in a position to oppose that.</P>

<P>My Lord, the other matters that I would seek to raise before you this afternoon are two.  First of all, there is a point of detail, as it were, not on my Lord's judgment but in relation to costs.  A matter to be resolved now is the costs thrown away as a result of the amendment of the design process.  Even though the defendant has been successful in the action, I think it would make sense if my Lord still made an appropriate order in that respect.  No doubt my learned friend will want to appeal.  If -- of course, we would submit he will not -- he was to be successful in the Court of Appeal, that matter would become much more important than of course it would be on my Lord's judgment as it stands.  I am in my Lord's hands. THE DEPUTY JUDGE:   What are the costs thrown away by the re-amendment? MR. BIRSS:   We submit that the costs thrown away by the re-amendment, or more to the point, the evidence related to the re-amendment, was about a day of the trial.  Certainly the whole of Tuesday morning was spent sorting out the application to amend the design process and, in actual fact, some of Monday was also spent chasing around the design right and the design process.  Those are matters which should not have taken  time at the trial.  If they had not happened, as we submit they should not have done, the trial would have been considerably shorter.  Rather than rehearse all my learned friend Mr. Watson has said, that is the basis of the submission.  I would submit they should be included within the costs thrown away by the amendment.</P>

<P>It is singular to have an action come on for trial when the final draft of the statement of claim, on a very important matter, the substratum of the case, does not appear at all in the defendant's closing submissions.  In fact, the final final amendment, I think, was a very small one, that is to say the amendment between Tuesday and Thursday.  The amendment between Sunday, if I can put it that way, and Tuesday was a very important one.  All the evidence that came out was very important evidence.</P>

<P>It is true to say, of course, that the claimant has been successful on the issue of originality, which is what the matter went to.  That is not the point.  The claimant could not have been successful on that issue without the evidence that was elicited.  My Lord, we submit those are costs to be thrown away, even though of course, as part of the general costs of the action, being successful, we would say the defendant will get them in the end.  It is still a matter that one ought to put in the right bucket, if I can put it that way. </P>

<P><B>THE DEPUTY JUDGE:</B>   What was your other point?</P>

<P><B>MR. BIRSS:</B>   The other point is a payment of costs on account. The position we have is this.  This morning we received a bill from the claimant, they were tooling up, as it were, to ask for a payment of costs on account.  I am afraid to say I do not have a bill I can put before my Lord.</P>

<P><B>THE DEPUTY JUDGE:</B>   You mean the result came as a surprise?</P>

<P><B>MR. BIRSS:</B>   I do not think that is the case.  To be fair it was just a matter of having the time to sort it out, there was not time to produce a bill for my Lord.  I can tell my Lord on instructions that our best guess on costs are œ150,000 for the action.  The bill that came from the claimant was œ120,000. What I suggest, as a way forward, there is no reason at all why I cannot give an undertaking to put in a bill but as far as the payment on account, can I explain that.</P>

<P>My Lord, it is now since the CPR becoming the norm, at least so far as IP cases are concerned and I cannot speak beyond that, for payments on account in relation to costs to be ordered at this juncture.  The question, and it is obviously an important question, is the amount that should be ordered on account.  The principle, very simply, and in fact my learned friend helpfully brought along the case, which is a case called Mars ---- MR. SILVERLEAF:   I am not resisting any of this, my Lord.  The only point on which I am going to object is he cannot possibly  have an order for costs if he cannot produce any kind of a bill.</P>

<P><B>THE DEPUTY JUDGE:</B>   There seems to be some force in that.  On the other hand, I am rather reluctant, and I would imagine from everyone else's point of view, it would be silly that I or some other judge should be brought back to get an order which would unquestionably be got.</P>

<P><B>MR. BIRSS:</B>   May I deal with that because the point simply is this, the bill we have from the claimant is œ120,000.  As I said my instructions are that our bill is about œ150,000. What I was going to invite my Lord to do. MR. SILVERLEAF:   150? MR. BIRSS:   Yes, to err on the side of safety, and I am quite prepared to make my submissions on the basis that my bill will not be any higher than my learned friend's.  I will submit that it is in the end, but as a matter to deal with it this afternoon without a bill I submit a perfectly fair way of dealing with it is to deal with it on that basis.</P>

<P>The only question, subject to my learned friend's point, is the amount that my Lord can be sure, or as sure as is sensible, will be covered when ultimately a detailed assessment is made.  My Lord, can I refer you very briefly to page 4 of Jacob J's decision where he considered the basic question which is whether, as a matter of principle one should make an order.  Perhaps my Lord pick it up on the second line  where he says that there is no guidance given in the rules. If my Lord reads all the way over to the top of page 5 that would be the simplest thing to do.</P>

<P><B>THE DEPUTY JUDGE:</B>   I have not come across this practice before as it happens.  Has any sort of practice developed or is there any indication here of what proportion of the full costs as a rule of thumb should be taken?</P>

<P><B>MR. SILVERLEAF:</B>   The last page, my Lord, two-thirds. MR. BIRSS:   I certainly will not dissent from that.  Although it is a point against me I think it is fair to say that the last one of these I did in fact the proportion was a little lower just as a matter of safety, but it is a matter of safety. MR. SILVERLEAF:   If it is of any assistance I would agree with my learned friend's experience. THE DEPUTY JUDGE:   I agree with you, Mr. Silverleaf, that it is a surprising situation to ask for an interim award with no bill.  On the other hand, realistically, there clearly are going to be some costs and they are going to be in the rough area of the figures that we have been discussing.  It seems to me to be a quite unnecessary formality, unless you wish to persuade me otherwise to send Mr. Birss away and get him to come back at his cost, yours and the court's, to make an application on another day.  Unless you want to persuade me otherwise, I am minded to adopt his suggestion of undertaking to lodge with the court within X days, I would have thought X  should probably be 7, an outline bill of costs or a bill of costs in whatever the appropriate form would be if he had done it today and for me to work on some figure which would be the subject of debate, as the basis for which I would make a costs order now.  I would order the amount was not in any event payable until the bill was lodged.</P>

<P><B>MR. SILVERLEAF:</B>   My Lord, may I say straightaway I am deeply troubled by the concept of doing what your Lordship suggests on this basis.  My learned friend would not actually be able to do it at all if we had not done our job and produced a bill because there would be nothing in front of the court by which he could justify the reasonableness of what he was saying to your Lordship, just his instructions.  It seems to me I know Laddie J ---- THE DEPUTY JUDGE:   You are penalized for being the good boys. MR. SILVERLEAF:   Laddie J says I always overstate things but it does seem to me to be grotesque that I come armed to deal with the point and he takes advantage of it.  The principle of proportionality needs to be brought in here.  If your Lordship goes down the road you are proposing, the next step is, well, we do not need to bother with bills, we will just tell the judge roughly what our costs are, he can make an order and we will lodge a bill if we win.</P>

<P>With the greatest respect, my Lord, one will achieve a degree of sloppiness that I would respectfully suggest  Lord Woolf did not have in mind.</P>

<P><B>THE DEPUTY JUDGE:</B>   I am not a policeman, and I have to balance making people do things properly with the trouble and expense to which everybody will be put if I am rigorous.  I am right, am I not, that it will be open to Mr. Birss to make an application next week when he has his bill for an interim payment?</P>

<P><B>MR. SILVERLEAF:</B>   My Lord, yes.  I cannot see that he can be prevented. THE DEPUTY JUDGE:   It cannot be stopped.  It would not have to come back before me but it is the sort of application that would most appropriately be made to me. MR. SILVERLEAF:   It would seem inappropriate to be made to another judge. THE DEPUTY JUDGE:   That is no problem, I can turn up though not next week as it happens because I am sitting somewhere else. You will then have to come back or of course I suppose it might be agreed. MR. SILVERLEAF:   Yes. THE DEPUTY JUDGE:   Do you believe that you would be entitled to the costs of such further attendance? MR. SILVERLEAF:   I would have thought so as a matter of principle.  This is something he could and should have been prepared to deal with today.  That is the problem that his unpreparedness has caused. </P>

<P><B>THE DEPUTY JUDGE:</B>   Without in any way wanting to penalize him, you might actually have a benefit in that I would err .... I am not trying to bargain with you, I am merely pointing out the facts, that I would err on the side of making the figure lower rather than higher in circumstances where I do not have a proper bill at all.</P>

<P><B>MR. SILVERLEAF:</B>   I understand where your Lordship is coming from.  Before we get on to that I do have some submissions on costs as a matter of generality because there is going to be ---- THE DEPUTY JUDGE:   Let us hear those and I will deal with everything together. MR. SILVERLEAF:   If may affect your Lordship's view.  There are two things.  The first is whether there should be an order for interim payment and, second, if it should, what its sum should be.</P>

<P>Your Lordship has delivered the judgment on the basis of which I make these submissions.  The first thing is I have lost only on one issue and a very large part of the effort involved in this action went into the other issues, in particular the question of originality.  In reality, on the evidence, quite a small part of the case was devoted to the question of what constitutes something that is commonplace. That is the only issue on which the defendant has succeeded.</P>

<P>A second point, my Lord, although possibly a issue with  less importance in the light of your Lordship's judgment, is that the case as to the making of the defendant's article that we were faced with in the evidence given by Mr. Asher in the witness-box was completely different in my respectful submission, in almost all material respects than the case presented in the witness statement.</P>

<P>In the witness statement, the case presented was he had been shown the photograph.  He had then put it to one side and gone off and, by a process of trial and error and a great deal of iteration, trying to get the thing to look right he had produced his own design.  The object of the evidence being given self-evidently was to give the impression that what he had done was produced a completely independent aesthetic design.  When he came to the witness-box the tale he told your Lordship was completely different.  It was that he had looked at the photograph, seen the configuration of the ---- THE DEPUTY JUDGE:   You need not elaborate, Mr. Silverleaf. MR. SILVERLEAF:   Then effectively applied what he had seen to his profile.  During the course of the trial your Lordship's mind went one way and the other and one could see how the evidence points one way and the other on whether or not there was a sufficient act of copying.  One of the things that is intriguing in analysis is that had that evidence been made available to us at the outset when witness statements were served my client would have been in a position to say, "Well,  looking at that I do not think I am prepared to take the risk of going to trial on the basis that that is what he did.  I am not satisfied that I have a good enough prospect of success and I will throw the towel in now".</P>

<P><B>THE DEPUTY JUDGE:</B>   You are obviously right that, as I indicated in my judgment, it was a very close run thing.</P>

<P><B>MR. SILVERLEAF:</B>   It was a very close call.</P>

<P><B>THE DEPUTY JUDGE:</B>   Since you detected it you were right.  My mind did go both ways on it.  It is bizarre, you having won on that point -- though perhaps only very closely -- to now pray in aid the fact that you might have decided not to go ahead. MR. SILVERLEAF:   My Lord, it is not bizarre in the sense that if your Lordship makes an order for costs to be payable throughout the entire period of the action, it will cost my client a great deal of money and it will cost my client a great deal of money that it would not have suffered if it had decided a year ago not to pursue the proceedings when the witness statements were exchanged and had a look at them and came to the conclusion that Mr. Scholes said, "I think that is copying but I can see that it could go either way and I am not prepared to risk my money".  That is the problem.  My Lord, in my respectful submission, the rules, first of all there is the overriding principle that litigation should be disposed of expeditiously and efficiently.  Then if we look at the actual rules themselves, we see that ---- </P>

<P><B>THE DEPUTY JUDGE:</B>   We may be able to cut this short.  If I can just see where we are going.  There is this particular point which is a very sophisticated point.  There is a more general point that you have won on some issues, including ones that involved a lot of expense.  In the old Elgindata days that would not, absent very special circumstances, have meant any different order as to costs.</P>

<P><B>MR. SILVERLEAF:</B>   Lord Woolf has said so in terms in PPL v. Rediffusion. THE DEPUTY JUDGE:   Quite a lot turns on this, unless you are prepared now, with a full argument, and Mr. Birss does not say he is not, it seems to me unsatisfactory that an important point of this kind should be decided without being properly worked up. MR. SILVERLEAF:   So Mr. Birss can go and work out his bill. THE DEPUTY JUDGE:   That is what I would have said had this problem not arisen and I suppose that is what you had predicted when you said it might affect my decision.  I think it is unsatisfactory to have an argument on this.  I have certainly not done an issues based costs point before and I will want to think about it carefully. MR. SILVERLEAF:   In that case your Lordship should see the authorities and have addressed to you proper written argument on the application of those authorities to the facts of this case. </P>

<P><B>THE DEPUTY JUDGE:</B>   I am afraid that must be right.  I suspect all argument can be quite short, an hour would be fine.</P>

<P><B>MR. SILVERLEAF:</B>   Less than that, my Lord, I would have thought.</P>

<P><B>THE DEPUTY JUDGE:</B>   Let us say an hour, at a time to be fixed probably the week after next because I am sitting elsewhere next week.</P>

<P><B>MR. SILVERLEAF:</B>   I would be very happy with that, my Lord.</P>

<P><B>THE DEPUTY JUDGE:</B>   Both sides to address submissions on costs. Mr. Birss I think knows enough about the basis of your application to be able to address it.  Have you sufficiently identified what it is that you are going to be arguing on?  It is simply the fact you have won on two or three issues which involved substantial costs and the odd argument about having won but won by a much closer margin than you might reasonably have expected. MR. SILVERLEAF:   I am taking two points, that the case we faced in the evidence was very different from the case that we were presented with initially.  Second, this is a case where an issue-based costs order should be made and the impact that will have on the costs order will have to remain ---- THE DEPUTY JUDGE:   I think you had better go the whole hog and without doing any elaborate exercise -- I know how expensive these can be -- I think although my inclination, if I were to accede to the issue-based costs, would be inevitably to be pretty broad brush to do it in terms of percentages, I would  like whatever the two parties, or you certainly making the application, and Mr. Birss, if he chooses to respond, to say what was the fair percentage split and the broad basis on which it is said like, you know, five witnesses were dealing largely with this point, most of the discovery was done ----</P>

<P><B>MR. SILVERLEAF:</B>  I fully understand.</P>

<P><B>THE DEPUTY JUDGE:</B>  That leads to this thought, that it might make more sense if the application .... I need your skeleton first and Mr. Birss's in reply. MR. SILVERLEAF:   That is a very good idea.  I fully understand at the end of the submissions I have little doubt that I would suggest to your Lordship that the principles of economy espoused by Lord Woolf should lead your Lordship to make some sort of overall apportionment rather than a specific issue by issue allowance of costs because that will simply lead to a very complicated detailed assessment.  I accept your Lordship's suggestion wholeheartedly that it would be appropriate to enable your Lordship to make that apportionment to have before you the parties' rather more specific allegations as to where the costs went.  In those circumstances, I would accede to your Lordship's suggestion that there should be sequential skeletons. THE DEPUTY JUDGE:   That being so, I am afraid the whole question of costs goes off.  Are there any other consequential matters? </P>

<P><B>MR. SILVERLEAF:</B>   The only other thing is permission to appeal.</P>

<P><B>THE DEPUTY JUDGE:</B>   Yes.</P>

<P><B>MR. BIRSS:</B>   May I just mention costs because I am going to resist what my learned friend says if I may.</P>

<P><B>MR. BIRSS:</B>   I have two very short points.  The submission is this.  It is fantasy, and I mean that specifically, for my learned friend to suggest the amount of costs that he is talking about, which as I understand it are my costs which he would ordinarily have to pay me in relation to originality, which he says of course he won on, and my costs in relation to infringement are significant, sufficiently so, to make it realistic and proportionate to indulge in the exercise my learned friend is talking about.</P>

<P>If it was the case that there were very substantial costs in the frame then I entirely follow what is being said and of course my learned friend says he is not ready either and well let us all go off and have an adjournment.  I see what my Lord is saying and I will not waste time on that.  In fact, the matter of costs being argued are not insignificant and I submit that it would be disproportionate and actually my Lord can dismiss my learned friend's application right now and order a normal order for costs because the main costs of this costs were commonplace.  All one has do is look at the evidence.  If we look at the evidence of the experts in particular, take Mr. Ratcliffe's evidence, from memory I think  his 28-page report of which 23 pages deal with commonplace. That is a measure of the proportion of the issues in this case that went on the issue that my learned friend was unsuccessful on.  That was in fact what this case was really about.</P>

<P>My Lord has found that what Mr. Asher did did in fact amount to copying.  What Mr. Asher did was pleaded in the defence.  The detail has to come out in evidence, that is true and there is an argument about whether it was always there or not and one sees that.  We do not accept it but I see the point.  The basic factual question has been there in this case from the very beginning.  We always said we had a photograph and nothing more.  What this case was about was commonplace as a matter of cost and evidence and that was the point that the plaintiff lost on.</P>

<P>My Lord, we would submit that actually although it is jolly attractive to get involved in minutiae of an issue-based costs assessment, it is wrong and you can say, right now that it is not likely to lead to anything sensible and real and my Lord should make an order.  I know my Lord sort of rather, listening to my learned friend, had thought that I was not opposing it. THE DEPUTY JUDGE:   I had not given you the chance either way so it is my fault.  I see what you say, Mr. Birss, and you may well be right, but you are not self-evidently right.  Add in the factor that you are not yourself prepared on the question  of costs, and I think the balance comes down in favour of adjourning the entire question.  You have this small consolation that if in the end it turns out that the submissions that Mr. Silverleaf wants to make are exposed as being obviously bad or even just fail, he may well get an order for the costs of the extra hour in the submissions.</P>

<P><B>MR. BIRSS:</B>   As far as sequential skeletons are concerned, I respectfully say that it is a very good idea and it ought to be very clear, I hope from my learned friend's skeleton, exactly what proportion he is contending for. THE DEPUTY JUDGE:   I am sure it will be.  What is a realistic timescale? MR. SILVERLEAF:   Your Lordship is not available next week. THE DEPUTY JUDGE:   No. MR. SILVERLEAF:   I would have thought that ---- THE DEPUTY JUDGE:   Or Monday, if that helps. MR. SILVERLEAF:   I would have thought that I can produce the appropriate skeleton certainly by the middle of next week, say Wednesday. THE DEPUTY JUDGE:   Why do we not say, and Mr. Birss I do not want to be unrealistic about this if you are in the middle of another trial, and I do not want to put you under pressure but if get a skeleton by 4 o'clock on Wednesday can you reply by 12 o'clock on Monday? MR. BIRSS:   Yes, my Lord. </P>

<P><B>THE DEPUTY JUDGE:</B>   That gives you the weekend if you have to. That will mean that if it is possible to fix up our hour on the Tuesday I will have had the chance to read the skeletons or any time thereafter, that suits everyone's convenience.</P>

<P><B>MR. BIRSS:</B>   Yes.</P>

<P><B>THE DEPUTY JUDGE:</B>   I imagine the listing has to be done through Chancery listing, although in many ways it would be more convenient if it could be done through the clerks. MR. SILVERLEAF:   We probably would not get a room. THE DEPUTY JUDGE:   That, I agree, has something to do with it. MR. SILVERLEAF:   The only other question is permission to appeal and your Lordship will appreciate that I would wish to have permission to appeal.  Can I just direct your Lordship to the practice direction in the new supplement to the White Book at page 1408, paragraph 2.8.1 at the bottom of the page.  It is the third sentence:  "The general rule applied by the Court of Appeal, and thus the relevant basis for first instance courts deciding whether to grant permission, is that permission will be given unless an appeal would have no real prospect of success." THE DEPUTY JUDGE:   That is what I thought it said.  Without expressing any lack of faith in my own decision, it is clear that the question of commonplaceness is not a straightforward one.  There is very little guidance in the authorities.  With all respect to Mummery LJ in Farmers Build, there is not yet a  body of case law.  These facts are very different from those there and I would have thought that it was a case where I could not possibly say there was no realistic prospect of success.  That is my provisional view, of course, Mr. Birss, if you want to persuade me to the contrary, please do.</P>

<P><B>MR. BIRSS:</B>   Without criticizing the judgment, as it were, I think that must be right.  There are not many decisions of the Court of Appeal in design right cases and it would be no bad thing for a few more frankly.  I do not think I need permission to appeal because I have won.  I have heard in other cases sometimes people in my position asking for it when there are issues which I lost.  I certainly did not need to in the past. THE DEPUTY JUDGE:   I think it will follow from what has already emerged that if you were to need permission to cross-appeal, you should certainly have it because the question of copying was not at all straightforward on these facts. MR. BIRSS:   I am grateful. MR. SILVERLEAF:   I would not resist it.  I think my learned friend does need it actually now.  I think the Court of Appeal expects permission to appeal to be granted issue by issue. THE DEPUTY JUDGE:   I do not suppose this is necessary, but I think it will be sufficiently apparent from my judgment.  I give you leave to appeal on the commonplace issue.  I give Mr. Birss leave to cross-appeal on the copying issue.  I do not give leave on any of the other issues. </P>

<P><B>MR. SILVERLEAF:</B>   Thank you.</P>

<P><B>MR. BIRSS:</B>   I have to ask and then my Lord rejects my application for leave on anything else.</P>

<P><B>THE DEPUTY JUDGE:</B>   Do you want to ask?</P>

<P><B>MR. BIRSS:</B>   No, in case I have to ask the Court of Appeal but I understand my Lord's judgment and will not waste time on it.</P>

<P><B>THE DEPUTY JUDGE:</B>   I will say no more.</P>

<P><B>MR. SILVERLEAF:</B>   Thank you very much.  I have no doubt that everybody else would join me in thanking your Lordship both for the expedition with which you have delivered the judgment and the extremely excellent way that the trial conducted.</P>

<P><B>THE DEPUTY JUDGE:</B>   Thank you very much.</P>