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	England and Wales High Court (Chancery Division) Decisions
You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Sales v Stromberg & Ors [2005] EWHC 1624 (Ch) (26 July 2005) URL: http://www.bailii.org/ew/cases/EWHC/Ch/2005/1624.html Cite as: [2005] EWHC 1624 (Ch)

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IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION

		Royal Courts of Justice Strand, London, WC2A 2LL
		26 July 2005

1. This is an action for infringement of design right under the Copyright Designs and Patents Act 1988, for breach of confidence and passing off. Section 213(2) of the Act provides "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." The articles in question are for use in complementary medicine. They are called "personal harmonisers" and are small decorative articles which can be hung round the neck as a pendant and which are designed to contain energised or "'imploded" water. They are made from copper tubing containing the imploded water and sealed at both ends
2. Imploded water is water that has been treated by a process that involves centrifuging.

Evidently it imparts certain beneficial properties to the water. This water can then be used to treat tap water, for instance, to give it beneficial properties including improved taste. This is done by putting the imploded water into a sealed copper tube in a cone shaped spiral and bringing this spiral into close proximity to ordinary water. This can be done, for instance, by placing the cone shaped spiral next to the water mains for a house.

3. The First Defendant has, since about 1995, made imploded water and have made and sold "Vortex Energisers", the cone shaped spiral devices referred to above, to the public. Until about January 2002 the First Defendant traded as the Centre for Implosion Research. Since about 1^st February 2002 the First and Second Defendants have carried on the business as a partnership trading as the Centre for Implosion Research. The Third Defendant is a company which has carried out international sales for the business since about 1^st February 2003. References in this judgment to "the Defendants" are intended to refer to the First Defendant or the First and Second Defendants together, depending upon the timeframe.
4. In 1997 the Claimant, Mr Sales, who practises kinesiology^[1], heard of the work of the Defendants through a third party. He contacted the Defendants to find out more about imploded water and its uses and the Vortex Energiser. The Defendants sent him samples of imploded water and subsequently sold him a Vortex Energiser which he installed in his home. He gave his clients treated water to drink. At the Defendants' request Mr Sales wrote a letter of recommendation dated 1^st July 1998.
5. Under cover of a letter of 26th August 1998 the Defendants sent the Claimant a prototype of a personal harmoniser. This was a small device containing imploded water in a sealed copper tube, bent to a particular shape. It is designed to be worn around the neck and is said to have a beneficial effect on the wearer, in particular protecting the wearer from the harmful effects of electromagnetic radiation. There is a dispute as to whether there was only one prototype sent or whether there were two. I shall have to deal with this below.
6. Having received at least one prototype, Mr Sales rang Mr Stromberg, the First Defendant, to say that the prototype personal harmoniser was unsatisfactory but that he knew how it might be structured to achieve what was wanted. Some general details of the design Mr Sales had in mind were mentioned but Mr Sales was reluctant to say too much without some assurance that his ideas would not be used without payment to him for his ideas. Mr Stromberg asked Mr Sales to put his ideas on paper so that he could consider them. Mr Sales asked Mr Stromberg to confirm in writing that he would pay him a royalty for the use of his designs if they decided to use them. This Mr Stromberg did by letter dated 1^st September 1998. The letter finished with the statement: "we guarantee you that we will not use your design in any way without your agreement. "
7. On the 2^nd of September Mr Sales sent rough sketches of three designs, a double spiral called "Infinity", a triple spiral called "Trinity" and a multiple spiral called "Torus". This action is only concerned with the Infinity and Trinity designs. The rough sketches were accompanied with some handwritten notes. The sketches and notes together are claimed to be the "design document" in which the designs in question are recorded.
8. Shortly after Mr Sales sent the sketches to Mr Stromberg, Mr Stromberg sent Mr Sales a further prototype in the form of a double spiral. Then on the 20^th September Mr Stromberg sent two more prototypes, one a double spiral the same as the previous one but with the ends of the tubing closed off differently, and the other a triple spiral. The covering letter stated: "Enclosed copper spirals of your design".
9. The triple spiral was unsatisfactory since it was made from two pieces of tubing joined together and the join broke easily. There is a dispute as to whether Mr Sales reported this to Mr Stromberg and as to whether Mr Sales proposed a solution to this by making the design out of one length of tubing.
10. On 21^st October Mr Stromberg wrote again to Mr Sales saying:

"We've been considering your designs and would like to take on board the twin and triple spirals. Working out a financial arrangement has been somewhat difficult.

"When I talked to you about your designs initially and when I offered you royalties in my letter of 1 September, I was under the impression that your designs were something quite novel and entirely your own idea. It has become obvious since our trip to Ireland in September, that these very same twin and triple spirals were used by Neolithic people over there some 5,500 years ago (picture postcards included) .... It is quite obvious that these designs are not patentable or protectable. Nor should they be - they belong to mankind. For us of course this means that there is no way of protecting our product from copycats. Anybody could work out the dimensions of our products and make their own copies. We can't stop them. So really, it is our imploded water within the spirals that makes these spirals unique.

"So, the situation as we perceive it is that your idea is very sound, and the fact that people have used it throughout the ages confirms your findings and confirms to us that it is a great shape to use. However, you are now expecting payment for something that we cannot protect in any way and which someone else can copy for nothing.

"Having said all this, we do appreciate your initial help in testing the Vortex Energiser and getting involved, and are aware of the promises we made in the letter of 1 September.

"We would like a fair and amicable arrangement and propose a one off payment of £100 for each spiral (ie. £200 in total) for bringing these ancient designs to our attention. We feel that an ongoing royalty payment is not applicable for the reasons explained above. However we did promise a royalty type payment and if you wish to hold us to it, we would alternatively pay you 1% on all twin and triple spirals sold, to be reviewed after 12 months. "

Included with the letter was a price list including the items "Triple Spiral Harmoniser" for £21 and "Personal Harmoniser (twin spiral and pendant.)" for £14.

11. Mr Sales answered this letter on the 1^st November:

"I received your latest letter 21-10-98 in connection with the Bio-Energiser shapes that I have spent much time in researching and developing using kinesiology.

"I must say I was rather disappointed to see some of the comments in your letter and consider the offer made in monetary terms as derisory in nature ....

"In the meantime I would be grateful if you did not copy the designs I gave

you nor make the products for sale until such time as an agreement on remuneration is reached and a written licence is given by me for marketing the device in accordance with the full technical specification half of which you have got so far. "

12. There followed a series of telephone conversations and letters between Mr Sales and Mr Stromberg in which Mr Sales asked for a royalty of 10% and Mr Stromberg responded that this was too much. The final letter from Mr Stromberg is dated 21 January 1999:

"In response to your recent recorded letter I would like to restate that the designs you sent me are ancient designs which have been used by mankind throughout the ages. It seems to me that you have reinvented the wheel by coming up with these shapes. This certainly does not give you the right to make any claims on them. Enclosed yet another image of a 5000 year old twin spiral. As far as I can see the only novelty or originality value that you can claim for yourself is your quite specific length measurement. We decided against using your measurement and our Personal Harmoniser (which we started developing long before you sent us your drawings) is now based on a Universal Constant, which has nothing to do with your measurement. Furthermore, tests have shown, that the imploded water it contains, is in actual fact the most important factor of the Personal Harmoniser and indeed all our products.

"I have no intentions whatsoever to agree to your inflated royalty demands (especially since you do not have sole rights to the designs anyway). However, as a measure of good will, and in order to close this matter, I am enclosing a cheque for £200.

13. Mr Sales responded by letter on 23^rd January 1999:

"I am in receipt of your letter dated 21^st January 99 and your cheque for £200 which I can only accept on the strict basis that it forms part payment as a first instalment for the ideas and designs that I have previously provided you with for the Bio-Harmonisers.

...

"If I do not reach an amicable agreement on either a licence and/or commission I intend to bring a claim for each harmoniser you sell from the time I provided you with the information.

"I have six years in which I can bring a claim and have therefore decided that the theft of my intellectual property will not go unchallenged.

"I would therefore suggest that you get some legal advice or ring me to reach agreement on this matter as soon as possible or change your design completely. "

14. There was no further communication between the parties until Mr Sales wrote to the Defendants on the 21^st March 2002 enclosing invoices for a royalty of 10% in respect of estimated sales for the previous three years. These totalled over £200,000. Mr Stromberg replied by letter dated 4^th April 2002 stating that the Defendants' position had not changed since the previous correspondence. There is one paragraph of this letter that is particularly relevant to the issues in this action:

"We were developing a flat (2-dimensional) portable spiral for electromagnetic protection several months prior to receiving "your design ideas". In fact we sent you some prototype samples before you submitted "your designs". Many others were made which you didn't see at the time. There were figure-of-eight type prototypes as well as all manner of different spirals. Some of these were actually very close to the design we eventually settled on. "

15. There was a further reply from Mr Sales dated 5^th April 2002 and the present proceedings were issued on 10^th January 2003. The claim is for design right infringement in respect of two of the designs sent to the Defendants by Mr Sales, the Infinity and the Trinity and for infringement of a further design right claimed to subsist in Mr Sales' proposal for a redesign of the Trinity design. There is also a claim for misuse of confidential information. It is said that the designs were confidential and that the Defendants accepted the confidential nature of the disclosure by the final sentence of the letter of 1^st September 1998.
16. The Defendants say that the document setting out the Infinity and Trinity designs is not to be regarded as a design document within the meaning of the Copyright Designs and Patents Act 1988, that design right does not subsist in the design document to the extent that the document concerned is held to be a design document and that their articles do not infringe any design right if it does subsist. They also have a Part 20 claim against the Claimant. They say that to the extent that the designs of the Claimant have design right then they belong to them. The Claimant is selling personal harmonisers that are identical to the Defendants personal harmonisers and therefore he is infringing their design rights. They also say that the Claimant is passing off his personal harmonisers and his business as being connected in the course of trade with the Defendants by using the words THE CENTRE FOR IMPLOSION RESEARCH or IMPLOSION RESEARCH in connection with his web site.
17. Since I can deal shortly with the Part 20 claim against the Claimant I shall deal with that first. So far as the claim for design right infringement, Mr Sales stated in his witness statement that he had never made or sold a copy of the Defendants' Personal Harmoniser that he had always been an approved distributor of the Defendants' products and that since this dispute began he had purchased Personal Harmonisers from Dulwich Health Society which was itself supplied by the Defendants.
18. Counsel for the Defendants argued that it was for the Claimant to prove that he had only sold the Defendants' Personal Harmonisers and that he had not done so. Mr Sales was not cross-examined on his clear evidence so his evidence on this aspect of the case is unchallenged. This claim was abandoned by counsel for the Defendants in closing submissions and I am satisfied that the Claimant has no case to answer on this part of the Defendants' Part 20 claim in any event.
19. That also deals with the passing off claim against the Claimant. Since the Claimant is offering for sale and selling products made by the Defendants I do not find his use of their name to be a misrepresentation. Mr Sales was cross-examined as to his claim in his witness statement that he has always been an approved distributor but it is only the use of the Defendants' name that is sought to be restrained in the Part 20 claim. In the circumstances I find that the Claimant has not passed of any goods or services as being those of or connected in the course of trade with the Defendants. He has only, accurately, represented that the goods he is selling are the Defendants' goods.

Design Right

20. I shall now deal with the Claimant's design right case. The sketches which appear in the pleaded design document are set out below:

21. There is also a written part of the design document that states, amongst other things, that the articles are to be made of copper tubing and gives the lengths of the tubing.
22. The Defendants challenge the subsistence of design right on a number of grounds.

They propose a three stage test as to whether the documents comprise a design document in which design right might subsist before considering whether any such design is original. The preliminary three stage test is expressed to be as follows:

a. The abstract question - Are the "designs" sophisticated, elaborate or detailed to a sufficient degree so that it can be said sensibly that they are designs for something, and

b. The technical question - Can an article be made following any of the Claimant's "designs", and

c. The title question - Are the circumstances surrounding the creation of the designs in suit such that the Claimant is the owner of them.

The Abstract Question

23. Mr Ludbrook, Counsel for the Defendants, submitted, as expressed in his skeleton argument: "A spiral shape is a simple geometric shape that is analogous to many other such shapes e.g. a helix, triangle, sphere, or pyramid. It is trite law that there can be no property in such shapes 'at large'. What is more, multiple generic spiral forms i.e. where more than one spiral has been juxtaposed to form, for example, double or triple spiral shapes, have existed for millennia and, in contemporary times, are used extensively in many 'New Age' type contexts." He submitted that this is a preliminary hurdle that the Claimant must overcome before considering originality.
24. I do not accept that this is a correct approach. There is no reason why a simple geometric shape can not be a protectable design for an article. A sphere, for instance, could be the basis for the design of a radio which could be protected by unregistered design right. A simple geometric shape may be commonplace in the design field in question, e.g. a sphere would be commonplace for the design of a ball, but, under Mr Ludbrook's approach, the issue of commonplace comes at a later stage. I do not find that the Claimant's design fails to qualify for design right protection on the ground that it is essentially a simple geometric shape.

The Technical Question

25. The submission under this head is that the drawing is very crudely drawn. The result is submitted to be: "It is impossible for any article to be manufactured following accurately either of C's designs. The imprecision of the depictions allows for very many possible interpretations of design (re any attempt to construct an article to the design) and the dimensions given are simply too scant to assist." I would have some sympathy for this submission were it not for the fact that Mr Stromberg clearly had no difficulty in producing a prototype to Mr Sales' design. It is notable that Mr Stromberg, having received the designs from Mr Sales produced the prototypes which he said were to Mr Sales' designs. He did not send several different ones asking whether these were what Mr Sales had intended. Furthermore, in the letter of 21^st October he said that the Defendants were interested in taking on board Mr Sales' designs, again with no suggestion in any of the correspondence that the designs were of no assistance.
26. Clearly, to Mr Stromberg, at the time, Mr Sales' designs were understandable and capable of being made. This is in contrast to Mr Stromberg's evidence now that the documents sent by Mr Sales were capable of a number of different interpretations and were not capable of being interpreted as identifying a design.
27. In this respect I prefer the evidence of Mr Stromberg's reaction at the time of receiving the documents from Mr Sales to his evidence now. I believe that Mr Stromberg's evidence now is directed to helping his case and he has created difficulties that did not exist at the time. F or reasons which will become apparent later in this judgment I have difficulty in accepting Mr Stromberg's evidence unless it is corroborated by contemporaneous documents or other evidence. This is a case where his evidence is contradicted by contemporaneous documents and I therefore reject it.
28. It is further submitted on behalf of the Defendants that some account of originality should be taken at this stage. What is said is that, although Mr Sales chose to draw something which did not correspond exactly to any design or article before the Court, nevertheless the degree of skill, judgment and labour involved was insufficient for the design to qualify for design right.
29. I do not see this as a separate objection, preliminary to an assessment of originality. It is not an assessment that can be made without looking at the design field in question and any copying that is alleged or admitted. An author, unaware of other designs in a particular design field may expend a considerable amount of skill, labour and judgment in producing a design which is, in fact commonplace. A skilled artist may dash off a few lines on a piece of paper and create something totally new and striking without appearing to have exercised skill, labour and judgment.
30. Mr Sales was cross-examined as to the length of time he took to produce the design document and the research that he claimed to have put into it. The judgment must be made in the context of designs that have gone before and, in particular, the designs of which he was aware. The objection as put by the Defendants is really part of the first "abstract" objection dealt with above. The argument is that this is a simple geometric shape and therefore, a crude drawing of such a shape cannot have design right. I cannot accept that argument and I find that the design drawing is capable of qualifying for design right subject to passing the originality test. In any event, I find that the skill and labour put into producing the designs by Mr Sales was sufficient to qualify for design right.

The Title Question

31. It is submitted for the Defendants that they commissioned Mr Sales to produce the designs and that they are therefore the owners of any design right that subsists in the designs. They say that the letter, requested by Mr Sales, that formed the basis of Mr Sales disclosing his designs to the Defendants was, effectively, a letter of commission. The letter states that, if the Defendants like the designs, they will pay Mr Sales a royalty, alternatively they will manufacture them exclusively for Mr Sales. This is not a commission. The Defendants did not necessarily agree to pay Mr Sales anything. On a fair reading of the letter it is clear that the designs are Mr Sales' but that if the Defendants wish to make and sell them they will pay him a royalty. The amount of the royalty was not fixed and the whole reason for this action is that there was no agreement as to the level of royalty to be paid. The Defendants would appear by this argument to be saying that the commission was for an indeterminate payment to be set by them if not agreed. This argument fails.
32. The Defendants also suggest that, if the commission argument fails, then they have an implied licence to use the designs, again based on the letter. The Defendants refused to pay a royalty and denied that they were using the Claimant's designs. Under the circumstances it is impossible to imply a licence from the letter. Had they agreed a royalty with Mr Sales then they would have had a licence but not without agreeing to pay a royalty. Acceptance of the letter by Mr Sales was an agreement to grant a licence subject to reaching agreement on the royalty. This argument fails.
33. I turn now to consider originality. This has two aspects, namely: (1) originality in a copyright sense; and, (2) originality as defined by section 213(4) of the Copyright Designs and Patents Act, i.e. not commonplace.

Originality in a Copyright Sense

34. For a design to be original in a copyright sense the design must not be copied slavishly from an earlier design. There must be at least a minimum amount of relevant skill and labour involved in the creation of the design. The Defendants allege: "Put at their highest, C's designs are nothing more than crude copies of Dl's work, augmented or varied in a way which does not warrant or attract protection. " To determine whether this is the case I must consider what designs the Defendants disclosed to the Claimant before he made his designs. There is a conflict between the parties as to what prototype(s) were sent by Mr Stromberg to Mr Sales on 26^th August 1998 and I must resolve it.
35. The letter of 26^th August 1998 from Mr Stromberg states: "Enclosed one Vortex Energiser, one Personal Harmoniser (see leaflet) and an energy pendant." The Vortex Energiser is the large three dimensional coil used for energising mains water and is irrelevant for present purposes. The Claimant's evidence was that he received one personal harmoniser and that it was of a design similar to the design shown at B in the photograph below although more elongate and with a single larger coil at the top and which is referred to, for obvious reasons, as the "Clef' design. He says that there was no other prototype in the package to the best of his recollection.

36. Mr Stromberg says that he also sent a prototype that looked like A in the photo.
37. Mr Stromberg had also sent prototypes to a Mr Tom Clay and a Mr Graham Whitehead at the end of July. Mr Stromberg said that these were of the design shown at D in the photograph above. Witness statements were provided by both Mr Clay (on behalf of the Defendants) and Mr Whitehead (on behalf of the Claimant). Civil Evidence Act Notices were served in respect of both of these witnesses, in the case of Mr Clay because unfortunately he had died before the trial and in the case of Mr Whitehead because he lives in Ireland.
38. Mr Whitehead exhibited a letter he had written to the Defendants' solicitors in September 2004 in which he had drawn his recollection of the prototype he had received from Mr Stromberg. This was substantially as the one shown at B in the photograph above. He states the he was provided with a photograph (a copy of the one above) showing four shapes by the Claimant's solicitors shortly before he signed his witness statement in February 2005 and he identified the one marked "B" in the photograph. He specifically states that he does not believe that it looked like "A" as "it was not symmetrical or balanced". Mr Whitehead had met Mr Stromberg in Ireland in September 1998 and Mr Stromberg had brought with him a further prototype which Mr Whitehead believes "was virtually identical to the earlier one" he had received. Thus Mr Whitehead's evidence was that he had received only one design of prototype from Mr Stromberg and it was of the same design as was identified by Mr Sales as having been sent to him in August. It is to be noted that Mr Whitehead's initial letter in which he drew the shape of the prototype was triggered by an approach from the Defendants' solicitors and not the Claimant's.
39. Mr Clay's evidence was rather different. Mr Clay wrote a letter to the Defendants on the 4^th of September 2004 confirming that he remembered receiving Mr Stromberg's letter of 29^th July 1998 "together with the enclosed samples". The letter, which was disclosed by the Defendants in these proceedings, stated that he had lost the "personal harmoniser after several years of use and don't know what has happened to it. However, I do remember clearly the double spiral (figure of eight) shape. It was not quite as tightly wound as the production model, which followed, but apart from that it looked the same to me. This is approximately the shape of it." There was this hand drawn shape in the margin:

40. Mr Clay signed a witness statement on the 1^st of March 2005 which, although it did not refer to the September letter repeated the effect of it and contained essentially the same sketch. On this basis it would appear that there was an even split of recollection as to which prototype was sent by Mr Stromberg to the two independent recipients. However, certain facts came out about Mr Clay's evidence during the course of the trial.
41. In January 2005, the Claimant's solicitors, having seen the September letter from Mr Clay to the Defendants, requested copies of correspondence preceding that letter. This was not forthcoming at the time but on the first day of the trial Mr Cuddigan on behalf of the Claimant renewed the request. The Defendants considered the position over night and disclosed some e-mails, solicitor's file notes and correspondence with Mr Clay. Mr Stromberg was cross-examined on these during the trial. From all of this the following facts emerge.
42. In August 2004 Mr Stromberg telephoned Mr Clay to ask him whether he could remember receiving the letter and the prototype. He told Mr Stromberg that he could but that he had lost both the letter and the prototype. Mr Stromberg asked Mr Clay if he could write to the Defendants confirming this and producing a sketch of the prototype. According to Mr Stromberg, Mr Clay said it would be easier for him if the Defendants drafted a letter for him with the contents of the telephone call. He also asked him to send an image of the prototype "so that he could verify that this was in fact the one he remembered receiving".
43. On the 2^nd of September 2004 the Defendants sent an e-mail to Mr Clay in the

following terms:

"Dear Tom,

Thank you for your call today and your support. We have looked through our files and haven't found any specific info on your first visit to us. Rather than writing a retrospective letter to us, we would prefer if you sent us a contemporary letter on your headed paper along the following lines:

"Dear Dolly and Jonathan,

I confirm that I do remember receiving your letter of 29 July 1998 together with the enclosed samples. Unfortunately I lost all my paperwork of that time. I also lost the personal harmoniser after several years use and don't know what has happened to it. However, I do remember clearly the double spiral (figure-of-eight) shape. It was not quite as tightly wound as the production model, which followed, but apart from that it looked the same to me. This is approximately the shape of it: (Tom, if you could do us a drawing in you (sic) own hand which resembles the attached image, that would be great)

I hope this is of some help.

Best wishes

Tom Clay"

44. This draft letter is reproduced exactly in the handwritten letter of 4^th September from Mr Clay except, of course, the sketch of the shape replaces the instruction in brackets. One of the documents disclosed during the trial is a file note of a telephone conversation the Defendants' solicitor had with Mr Clay and there is also a copy of a letter to him confirming the content of that conversation. From this it would appear that Mr Clay confirmed the accuracy of the contents of the letter although it appeared that Mr Stromberg had volunteered to draft the letter rather than Mr Clay having asked him to do so. Mr Clay also gave an explanation as to what was being referred to as "a retrospective" letter in the first part of the e-mail. Mr Clay said that this was a reference to an earlier visit by him to the Defendants' premises when he had seen various prototypes. This was before the sending of the prototypes in July 1998. It was suggested to Mr Stromberg in cross-examination that this was something rather more sinister. This was denied by Mr Stromberg and although I do not find the explanation very convincing I make no finding in respect of it. No "retrospective letter" was produced.
45. However, I do regard the circumstances surrounding Mr Clay's letter and his evidence generally of great concern. I think it was wholly inappropriate to get Mr Clay to produce the letter in the way that he did. I am particularly concerned about the manner in which the hand drawn image of the shape was produced. At the time that the Defendants drafted Mr Clay's letter they had the photograph which is reproduced above that had been scanned into their computer showing four prototypes. It is not claimed that this photograph was taken at the time the prototypes were sent to the three individuals but it was claimed that one of those shown in the photograph was the same design as one that was sent to Mr Clay and Mr Whitehead. Mr Stromberg's evidence was that what was sent to Mr Clay was a "cropped" version of that photograph. Thus, rather than sending the photograph with all four designs shown and asking Mr Clay to indicate which one he remembered being sent, Mr Stromberg selected the one he wanted Mr Clay to draw and sent him only that one. In his witness statement Mr Stromberg referred to Mr Clay's letter in the following terms:

"As can be seen from Mr Clay's letter of 4^th September 2004, he remembers distinctly receiving the prototype, and states "I do remember clearly the double spiral (figure of eight) shape. It was not quite as tightly wound as the production model, which followed, but apart from that it looked the same to me. " Mr Clay included in his letter a sketch from memory of the approximate shape of the prototype Personal Harmoniser that he received from me at the end of July 1998." (My emphasis.)

46. In these circumstances I regard the evidence that was put forward by the Defendants in the name of Mr Clay as being highly misleading. Having seen Mr Stromberg in the witness box I do not believe that he would deliberately put forward something that he knew to be wrong. In this instance I think that he really believed what he got Mr Clay to write. However, I am unable to accept Mr Clay's evidence as I believe that it was tailored by Mr Stromberg to strengthen his case. I accept Mr Whitehead's evidence that what Mr Stromberg sent out in July 1998 was the Clef design. This provides some corroboration for Mr Sales' evidence that he was sent the Clef design I believe Mr Sales' evidence is also confirmed by the fact that when Mr Stromberg received Mr Sales' designs he did not respond by complaining to Mr Sales that his design was nothing new and was no different from the prototype he had sent Mr Sales in the first place. In fact, in the letter of 21^st October set out in paragraph 10 above Mr Stromberg offered a payment of £1 00 for each design ''for bringing these ancient designs to our attention". In the light of the attitude of Mr Stromberg to Mr Clay's evidence I am unable to accept Mr Stromberg's evidence unless it is corroborated by other material.
47. Any suggestion that Mr Sales' design was not original in a copyright sense because it was no more than a crude copy of Mr Stromberg's prototype fails. Mr Sales' design is original in a copyright sense. Even had I accepted the evidence of Mr Stromberg that the design of prototype sent to Mr Sales was the "pretzel" shape I would still have held that Mr Sales' design was original in a copyright sense.

Commonplace

48. Section 213(4) of the Copyright Designs and Patents Act 1988 provides:

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.

The Defendants say that Mr Sales' designs are commonplace and so are not original and are disentitled to design right protection. To consider this objection it is necessary to decide what the design field in question is.

49. The Defendants define the relevant design field in the following terms:

Ornamental or decorative domestic artefacts referable to imagery linked or associated with one of more of the following: alternative or holistic medicine; healing powers; good luck; religious faith; or ancient, especially Celtic, civilisations. (Amended Response to Claimant's Part 18 Request)

The Claimant defines the relevant design field as:

Complementary medical devices.

50. The Defendants' definition is much wider than the Claimant's. The main area of disagreement between the parties centred on whether or not the design field included ornamental or decorative as opposed to purely medicinal devices. I believe that the true design field is "Complementary medical devices including ornamental or decorative such devices." Thus the designer is looking to design an article with functionality and aesthetic appeal and will look to designs for articles and articles in the broad area of complementary medicine.
51. I am aware that in the case of Scholes v. Magnet [2002] FSR 10 the Court of Appeal stated that the fact that the definition of design did not incorporate any reference to the nature of purpose of the article or the material structure of it meant that these were not relevant to the identifying of the design field. However, I do not believe that the Court there intended to rule out any consideration of the purpose of the article. In that case the design field was held to be "the field of window design". The definition of the article as a window necessarily imports the purpose of the article to some extent. It was only at a more specific level that the definition should not be in terms of the purpose. In this case I believe that the fact that the article is for use in complementary medicine is the equivalent of identifying the design field as "the field of window design" .
52. The Defendants relied upon the expert report of Dr Robert J Wallis. Dr Wallis is an

academic. He stated his area of expertise as:

I specialise in the archaeology and anthropology of visual culture and representation with particular attention to rock art and the art of shamanistic communities; and the representation of the past in the present, especially contemporary pagan, 'New Age' and other alternative engagements with the past ... In addition to these professional qualifications, I have personal expertise in the design field in issue as a 'New Age' practitioner myself

53. Dr Wallis expressed himself to be in broad agreement with the Defendants' definition

of the design field in question. However he proposed his own definition:

The design field is therefore comprised of artefacts referencing imagery associated with ancient and indigenous cultures (the spiral and multiples thereof) and alternative/New Age interests such as healing.

54. Dr Wallis stated that he was told by those instructing him that 'Design' was defined in the Copyright Designs and Patents Act 1988 as "meaning features of shape or configuration other than surface decoration". Unfortunately, it was not made clear to him that the design must be a design for an article and accordingly he did not seem to appreciate the effect of the exclusion of surface decoration from the concept of design.
55. Dr Wallis referenced numerous 'designs' from ancient cultures which encompassed spirals whether single, double or multiple. For the most part these were carvings on rock or other forms of pictures but not designs for articles of any type. Under cross-examination it became clear that this was because Dr Wallis had failed to appreciate the distinction between what is usually referred to as a 'design' and the definition in the Act limiting it to designs for articles. I do not blame Dr Wallis for this error but it did render his evidence peripheral in identifying what designs were commonplace.
56. Dr Wallis was also criticised by Mr Cuddigan for his use of the expression "I would argue ... " at various points in his report. The expression is unfortunate for an expert who is supposed to be assisting the Court and not arguing one side's case. However, I accept Dr Wallis' explanation that it was his way of putting forward his opinions and was not intended to be argument.
57. Dr Wallis' evidence was supplemented by evidence from the internet and from a solicitor not connected with this case who had seen various items of native American jewellery on a visit to the United States. I do not propose to go through this evidence in detail. Some of it related, as did Dr Wallis', to decorative designs carved or etched onto objects and much of it was not proved to have pre-dated the designs in question.
58. The net result of the Defendants' evidence on the commonplace issue was that although they established that pictures of spirals were common in rock art and other cultures, such as the native American culture, they failed to establish that spirals are common in the design of articles of any kind. Thus, although I have held that the design field is narrower than that argued for by the Defendants, it would have made no difference if I had held it to be of the full width of the Defendants' definition. The Claimant's design is not commonplace.
59. I therefore hold that design right does subsist in the pleaded design documents and that the Claimant is the owner of it. I shall now consider whether that design right has been infringed by the Defendants.

Infringement-Infinity Design

60. It is argued by the Defendants that the Defendants' articles are not objectively similar enough to warrant an inference of copying. Pictures of the prototype of the Claimant's design made by the Defendants and of the Defendants' product alleged to infringe are set out below:

Prototype to C's Design        D's Product
61. A comparison of the two articles shows that there is a very high degree of objective similarity. I am aware that the comparison is between the design document and the article alleged to infringe since the prototype is not itself pleaded as an article recording the design. Nevertheless, I believe that it is relevant also to look at the prototype made by Mr Stromberg and said by him to be according to Mr Sales' design. It is illustrative of the design but, in any event, a comparison with the design document shows a similar high degree of similarity.
62. The Defendants, however, submit that the comparison is 'muddied' by two factors. The first is that Mr Sales had two of Mr Stromberg's designs to use as his creative springboard. The second is that the two articles are "based on a high degree of common subject matter in a common field of design." Both of these arguments are dealt with by my findings above. I have held that the only design of Mr Stromberg's that Mr Sales had when he made his designs was the Clef. The differences between that and Mr Sales' design are much greater than the differences between the Defendants' article complained of and Mr Sales' design. I have also held that the spiral design was not a commonplace design for articles.
63. The Defendants also submit that "because C's designs are so imprecise, such imprecision, in itself, amounts to a profound dissimilarity between C's "designs" and Ds' articles". Although Mr Sales' drawings are rough, taken together with .the instructions for the length of the copper tube, they are sufficiently precise to establish the similarity shown by a comparison of the articles shown above.
64. Accordingly, if it were necessary, I would hold that the similarity was sufficient to raise an inference of copying. However, I do not think that it is necessary to consider an inference from objective similarity. In the present case, the contemporary correspondence establishes the causal connection. Mr Stromberg told Mr Sales that he liked his design and wanted to add it to the Defendants' range. He offered him money which Mr Sales refused. Mr Stromberg then went ahead and made and sold a product which was virtually identical to the prototype which he had made from Mr Sales' designs. There is thus an unbroken chain of causation from Mr Sales' design documents, through the prototype made to that design, to the final commercial product.
65. The Defendants' products are substantially the same as the Claimant's design for the Infinity product and they are infringing articles.

The Triple Spiral Design

66. After he had received Mr Sales' design documents Mr Stromberg made a prototype to the design of the triple spiral. As required by the design document, this was made from two lengths of copper tubing which were joined together. This was unsatisfactory and the prototype sent to Mr Sales broke quite soon after he received it. Mr Sales gave evidence that he spoke to Mr Stromberg about this and suggested that it could be made from one piece. Mr Stromberg denied this. The Defendants' product is made from one piece of tubing which necessarily makes it look somewhat different from the Claimant's design. There is a clear causal connection between the Defendants' product and the Claimant's design. The Second Defendant, Mrs Knight, gave evidence that she had designed the one piece product and that the idea for solving the problem had occurred to her unprompted by anything from the Claimant. I accept that evidence. However, even though she did not have the Claimant's design in front of her, she was solving a problem that had become apparent with the Claimant's design. There is, necessarily a causal connection in such circumstances.
67. However, infringement requires the infringing article to be substantially the same as the design relied upon. Although both designs have a triple spiral, to make it from one piece of tubing requires a substantial change to the design in that the tubing has to be folded back on itself and this doubles the tubing in the third spiral. I do not find that this is substantially the same as the design shown in the design document. Accordingly the claim for infringement of the triple spiral design fails.

Breach of Confidence

68. The Claimant has pleaded an alternative claim in breach of confidence. The claim is that Mr Sales disclosed his design ideas to Mr Stromberg only after he had received from him the letter of 1^st September 2005. That letter established the relationship between the parties and showed that the information in the design documents was being disclosed to the Defendants for the sole purpose of the Defendants evaluating the designs and deciding whether they were interested in adding the designs to their range of products. Any unlicensed use by the Defendants of those designs would be a breach of confidence.
69. I accept the Claimant's submissions that the information was of a confidential nature in that it had not been communicated to the public before he sent it to Mr Stromberg. Clearly, the letter from Mr Stromberg was an acceptance of an obligation of confidence in respect of the information disclosed to him by Mr Sales. So far as the Infinity design is concerned, I believe that it is clear that the Defendants used that information in an unauthorised manner. All the necessary ingredients of the tort of breach of confidence are made out in respect of the infinity design.
70. What about the Trinity design? Again the information was of a confidential nature and was imparted under the same condition of confidence as was the Infinity design. There are two issues, namely: (1) whether the idea was sufficiently well developed as to be able to be put into practice; and, (2) whether unauthorised use was made of the Trinity design.
71. The triple spiral design made by the Defendants was different from that disclosed by the Claimant. I have held that it was sufficiently different as not to be an infringement of the design right in the design documents. It is not substantially the same design. Nevertheless, the Claimant submits that Mrs Knight did not start from a clean sheet of paper - and indeed I have found that she was seeking to solve a problem that was inherent in the Claimant's design.
72. However, to be protectable under the law of confidence an idea must be sufficiently well developed as to be able to be put into practice. See particularly De Maudsley v Palumbo [1996] FSR 447 in which Knox J. summarised the relevant cases. On this basis, the general idea of a triple spiral device is not protectable: only the idea of the actual design. But the actual design proposed by Mr Sales was not capable of being put into practice in a practical way. Furthermore, by the time that Mrs Knight came up with the design for a triple spiral design made from a single length of copper tubing the Defendants had seen the triple spiral rock carvings in the caves at Newgrange in Ireland. Although those carvings are not designs within the meaning of the definition in the Copyright Designs and Patents Act 1988 they are not irrelevant for present purposes. Having seen those carvings, the Defendants were entitled to attempt to make an article having the appearance of the shape carved, provided that they did not infringe the Claimant's design rights. That is what I have found that they did. I find that not to be a breach of confidence because they have only made use of the vague general idea of a triple spiral and not the precise design communicated to them which was, in any event not a practical design.

Conclusions

73. For the reasons given above I find that the Claimant's claim for design right infringement succeeds in respect of the Infinity design but fails in respect of the Trinity design. Similarly with the breach of confidence claim it succeeds in respect of Infinity but fails in respect of Trinity. The Defendants' Part 20 claim fails. I shall hear counsel as to the form of order.

Note 1   A form of muscle testing, originally developed in the 1950s in the USA designed to test muscle strength and mobility, but which has more recently been developed as a means to diagnose and treat illness and disease.     [Back]