Nabavi & Anor v Guild

For unregistered design right, originality requires more than mere copying. A copied design may become original if the totality of the modified design reflects sufficient independent skill and labour, but the assessment must address the design as a whole. Infringement requires copying the protected shape or configuration so as to produce articles exactly or substantially to that design. Similarity and opportunity may support an inference of copying, but the inference is only prima facie. It must be assessed against the correct comparator, the simplicity of the design, the alleged infringer’s other work and the complete evidence. An appellate court may intervene where the first-instance judge has applied the wrong legal approach or drawn an inference unsupported by the findings.

Mrs Guild claimed copyright and design right in a sweater, cardigan and shirt. She alleged that Mr Nabavi had copied designs created and recorded by her in 1991. The judge rejected that account, finding instead that the designs were based on a sweater by Romeo Gigli, with alterations made during the parties’ collaboration. He held that the alterations produced original designs for the purposes of Copyright, Designs and Patents Act 1988 design right, and that Mr Nabavi later infringed them.

Mr Nabavi appealed, challenging originality, copying and substantial reproduction. The central questions were whether the designs, as found, were original, whether he copied them, and whether his garments were made substantially to them.

1. Appeal allowed. The Court of Appeal held that the judge had erred in principle in attributing the relevant design alterations to Mrs Guild alone. The increased width from 88 cm to 100 cm originated in a manufacturing mistake and, although later adopted deliberately, the findings did not establish that Mrs Guild alone was responsible for it. The evidence also did not establish that she alone designed the crossover V-neck or other relevant details.
2. Under section 213 of the Copyright, Designs and Patents Act 1988, originality had to be assessed by considering the totality of the modified design. The individual features relied upon, including the crossover V-neck, ribbing and changes required to make cardigans and shirts, were insufficient without the width feature. Once that feature could not properly be attributed to Mrs Guild alone, the designs were not shown to be original on the judge’s findings.
3. Even assuming originality, the finding of copying could not stand. The judge had compared Mr Nabavi’s garments with later garments produced by Mrs Guild, rather than with the original designs. The differences in width, length and sleeve dimensions were material. In the case of a basic and simple design, the burden of proving copying was considerable, and the possibility of independent creation was correspondingly greater.
4. Similarity and opportunity could justify a prima facie inference of copying, but the inference was not inevitable. The judge had failed adequately to explain why Mr Nabavi’s evidence denying copying was rejected, despite generally finding him a reliable and honest witness. He had also failed to account for Mr Nabavi’s production of wide garments before meeting Mrs Guild and the diversity of his later output.
5. For design right, the relevant comparison concerned shape or configuration. Matters such as materials, fibres, trims and knit, which had influenced the judge’s assessment of an overall change in design, could not establish infringement of that narrower right. In view of the conclusion on copying, no separate issue of substantiality arose.

The counterclaim concerning groundless threats was left for determination under the agreed minute of order. Leave to appeal was refused.

• Court of Appeal (Civil Division): Appeal from the judgment and order of Rimer J dated 2 February and 22 February 2001. The appeal was allowed.