Case No: HC-03 No. 2684
Neutral Citation Number: [2003] EWHC 2414 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION

Royal Courts of Justice
Strand, London, WC2A 2LL

Date: 20 October, 2003
B e f o r e :

THE HONOURABLE MR JUSTICE LADDIE
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	MATTEL, INC	Claimant	
			
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	1) WOOLBRO (DISTRIBUTORS) LTD
2) SIMBA-TOYS (HONG KONG) LTD
3) SIMBA-TOYS GmbH & Co. KG	

Defendants	

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Based on the transcript prepared by Marten Walsh Cherer
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Mr David Kitchin QC and Mr Adrian Speck (instructed by Bird & Bird for the Claimant)
Mr Kevin Garnett QC and Mr Andrew Norris (instructed by Allen & Overy for the 2nd and 3rd Defendants)
The 1st Defendant was not represented

Hearing date: 20 October, 2003
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JUDGMENT
Mr Justice Laddie: 
1.	I have to resolve an issue that has arisen at an early stage of this trial, namely whether or not it is appropriate to allow the Claimant, Mattel Inc (“Mattel”), to adduce similar fact evidence in this action. 
2.	Mattel is a well-known manufacturer of toys. Its major product is a range of dolls and accessories sold under a variety of names including “Barbie”. The Defendants are Woolbro (Distributors) Ltd, Simba-Toys (Hong Kong) Ltd, and Simba-Toys GmbH & Co. KG. In this action, no further relief is sought against Woolbro, the First Defendant, but the action against the two Simba-Toys Defendants continues. I will refer to the Second and Third Defendant together as “Simba”.
3.	The action is one for alleged infringement of community unregistered design right and copyright. At its heart is an allegation that the Defendants have copied and offer for sale a doll which is a copy, in particular of the head and the make-up of the face, of a doll introduced to the market by Mattel in the last year or so. The Mattel product is called the “My Scene” doll. The alleged copy is sold under the name “My Style”.
4.	The action started on 24 July of this year and on 25 July an application was made for a speedy trial. That application came before Jacob J (as he then was) on 30 July and he made an order accordingly. In fact, there have been some delays, mainly caused by defaults by the Defendants in complying with the time limits imposed by Jacob J’s order, and the trial has now come on in the second half of October. 
5.	The Defendants served their defence on 29 September of this year having been required so to do by an order of Lawrence Collins J. The next day the Claimant served a reply which at paragraph 2 reads as follows: 
“In addition to the remarkable and close similarities between the ‘My Style’ and ‘My Scene’ range of dolls and in further support of the Claimant’s case that the ‘My Style’ range of dolls was copied from the ‘My Scene’ range the Claimant will rely upon the 2nd and 3rd Defendants long and sustained history of copying products manufactured sold and marketed by the Claimant. The Defendants have built a substantial business in copying amongst other things a significant proportion of the doll lines the Claimant produces.” 
6.	That pleading is a formal notification that the Claimant intends to rely upon similar fact evidence, a course which is open to it in a case like this as a result of the decision of the Court of Appeal in Mood Music Publishing Co. Ltd. v De Wolfe Ltd. [1976] 1 Ch. 119. In that case, Lord Denning said: 
“The admissibility of evidence as to ‘similar facts’ has been much considered in the criminal law. Some of them have reached the highest tribunal, the latest of them being Reg v. Boardman [1975] AC 421. The criminal courts have been very careful not to admit such evidence unless its probative value is so strong that it should be received in the interests of justice: and its admission will not operate unfairly to the accused. In civil case the courts have followed a similar line but have not been so chary of admitting it. In civil cases the courts will admit evidence of similar facts if it is logically probative, that is, if it is logically relevant in determining the matter which is in issue: provided that it is not oppressive or unfair to the other side: and also that the other side has fair notice of it and is able to deal with it.” (p 127)
7.	The way in which this issue arises is as follows. The Claimant pleaded copying, that being an essential part of successful claims in design right and copyright infringement. In their defence, the Defendants denied copying and claimed that their “My Style” doll was independently designed. The purpose of the reply was to suggest that the defence of independent design was not be true. As Mr. Kitchin QC, who appears for Mattel, puts it, if Simba did not copy that would have represented, as his client sees it, a change in the habits of a corporate lifetime. 
8.	In any event, nothing further happened until the evidence came in on 13 October. That is to say, a week ago. There the Claimant put in evidence of a large number of its Barbie doll and accessory designs which, so it says, had been copied over the years by Simba. I should explain that although Barbie is a doll which has existed for many years, it is always being refined so that, for example, each year she is to be found engaging in new juvenile pursuits. In fact not all of the pursuits are necessarily juvenile since I notice that one of the annual additions showed her as a dentist, or at least a dental nurse. So the Claimant put in evidence to the effect that there was a history of the Defendants mimicking its products. 
9.	Furthermore, it relied upon a final judgment of the Commercial Court of Paris, given on Friday 28 June 2002. The French court was concerned with issues of unfair competition and passing off. In that case Mattel had asserted, and I read from the judgment: 
“......that Simba-Toys adopted an approach of systematically copying and borrowing elements that identify and personalise Barbie dolls in order to cut into Mattel’s market share and this conduct constitutes unfair competition and passing off.” 
10.	In support of this allegation, Mattel alleged that Simba had copied a considerable number of its Barbie dolls including, incidentally, the dentist or dental nurse one. 
11.	It is not necessary to go through the whole of the judgment. In substance, the court came to the conclusion that Mattel’s allegations were made out and gave judgment for it accordingly. 
12.	The response of the Defendants to this, at least until a day or so ago, was as follows. They did not put in evidence in direct response to Mattel’s similar fact evidence. On Friday of last week they appear to have addressed the issue by putting in their own evidence that Mattel had copied Simba designs in the past. Mr. Kitchin tells me that over the weekend his client has prepared reply evidence to that which will show, so he says, that Simba’s tit-for-tat allegations are unjustified. 
13.	However, before me Mr. Garnett QC, who appears for the Simba Defendants, takes a very different course. He says that this is not appropriate to allow in Mattel’s similar fact evidence. He says that even bearing in mind the decision in Mood Music, the admission of this evidence is not automatic. In all cases one has to look both at the probative value of material which is sought to be adduced and one has to guard against introduction of evidence which would be oppressive or unfair. He says in relation to both issues this is a case where it would not be appropriate to allow in the evidence. 
14.	Let me deal, first of all, with the question of probative value. I have some sympathy with the type of argument Mr. Garnett advances relating to the probative value of this type of evidence in so far as it is said to demonstrate copying. It is tempting to say, “once a thief, always a thief”, but I suspect that this type of material is logically of minor probative value in many cases. Showing that various products of a defendant are very similar to earlier products of a claimant may only show that the defendant gets inspiration from the claimant or that both get inspiration from current fashion trends. It may not demonstrate that those products are copied. To prove a habit of copying in the copyright or unregistered design right sense could well involve very detailed analysis of the precise degree of similarity and surrounding fashion trends relating to each alleged copy. In many cases this might be extremely onerous and time consuming. It appears to me that in some cases, before this type of evidence could be said to be probative of copying it would be necessary to engage in such a wide ranging investigation of secondary matters that it should be excluded on the grounds of proportionality. Absent such investigations it might well be said that the evidence is of very limited probative value. If this objection had been taken at an early stage on the ground that it was of limited value or involved disproportionate expense and trouble, it might have had greater impact than it does now, as I will explain in a moment. 
15.	In any event, this material could be of significance to another issue which I have to determine besides the direct issue of copying.
16.	In the defence, the Defendants simply asserted that they had not copied the “My Scene” doll but in their evidence which came in on 13 October, that is to say a week ago, they said that not only had they not copied the Matell doll but indeed they did not even know about its existence. Mr. Kitchin says, rightly in my view, that an important point in deciding the issue of copying in this case will be to determine whether or not the Defendants had prior knowledge of the Claimant’s doll so at to allow them the opportunity to engage in the copying of which they are accused. Absent opportunity to copy, it will be impossible for the Claimant to progress to the next step of showing that copying took place.
17.	The suggestion in the Defendants’ evidence that they did not know of the Claimant’s doll is, according to Mr. Kitchin, inconsistent with the history of close tracking which he says Simba has engaged in. It seems to me that on that issue this material could be of some value and has some probative value. If the Defendants have in the past kept an eye out for Matell’s new products, it may be some indication that their assertion that they did not do so in relation to this product is not to be accepted.
18.	However, the most important point relied upon by Mr. Garnett is that to allow this material in at this stage would be unfair and oppressive. He says that to answer the allegations made against his clients would involve them in having to show, for example, that when they came out with their dentist doll shortly after Mattel came out with its equivalent product, and in all other similar cases, there was some perfectly innocuous explanation other than the practice of copying the route mapped out by Mattel. He says that that would be enormously expensive and time-consuming, and he says that although Mattel claims that it has been able to answer the similar allegations made by his clients against it over the weekend, it is easier for Mattel to do so because it is such a large corporation. 
19.	I am unpersuaded by these arguments. Although Mr. Garnett may have tried to depict this as a battle between David and Goliath, it is no such thing. Mattel is a very large corporation but Simba rejoices in claiming to be within the top five toy manufacturers in the global market. Furthermore, if there was a bona fide worry that the introduction of this topic would impose a terrible burden on Simba and would be unfair, the obvious and necessary course would have been to protest immediately after the service of the reply on 30 September, some three weeks ago, and to ask at that stage for the court to rule either that similar fact evidence should not be allowed in in this case, or to point out that addressing it would take so much time that the trial date would need to be moved. 
20.	That was not done. The first complaint about the similar fact evidence appears to have been made some time in the middle of last week just before the skeleton arguments were served and after the Defendants had put in their own evidence which, I assume, was intended to deal with all the live issues in the case, including those raised in the Reply. The response of the Defendants has been not to say that they have an answer to this but to go on the offensive by saying that Mattel does the same thing. Whether evidence along the lines of “you copy as well” could be any assistance to Simba is a matter which I do not need to resolve now.  Furthermore, they have not sought to challenge by cross-examination the Mattel witness who put in this similar fact evidence nor have they denied the allegations of copying made. In addition, even now I do not understand the basis upon which the Defendants will seek to undermine the decision arrived at by the Commercial Court in Paris in June of last year. Had the defendants raised an objection to the introduction of similar fact evidence at the outset, it might have been easier to argue that it would be oppressive. But that was not done. The area of dispute in relation to this is now seen to be very limited indeed. I can not see how this material can be said to be oppressive. Furthermore, it will be appreciated that, the very limited challenge which the Defendants have raised to the evidence on this issue may well mean that the considerations set out in paragraph 14 above apply less in this case than in others.
21.	In my view, in the circumstances of this case, with large companies ranged against each other, the allegation of copying being clear from the outset, the allegation that this was not a one-off occurrence which was made clear to the defendants three weeks ago and in view of the fact that Simba must have known that this was the sort of thing that Mattel would argue in the light of their own experience of the proceedings in France, and in view of the fact that this material has already been responded to by the Defendants, I am of the view that neither of Mr Garnett’s arguments prevail and that this material should not be excluded.
22.	This is not intended to be determinative of probative value of this material. That is a matter on which Mr Garnett will be free to address me. As was made clear during argument, at the end of the day the most important evidence is going to be the evidence from the personnel on the Defendants’ side who say that they have independently arrived at the design of which complaint is made. This skirmish should not be allowed to cloud the importance of that evidence.