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England and Wales High Court (Patents Court) Decisions
You are here: BAILII >> Databases >> England and Wales High Court (Patents Court) Decisions >> Sandman v. Panasonic UK Limited, Matsushita Electric Industrial Co Ltd  EWHC Patents 346 (21 January 1998)
Cite as:  EWHC Patents 346,  Masons CLR 220, (1998) 21(4) IPD 21038,  FSR 651
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CH 1996 S 7434
IN THE HIGH COURT OF JUSTICE
Before: Mr Justice Pumfrey
AUBREY MAX SANDMAN
- and -
(1) PANASONIC UK LIMITED
(2) MATSUSHITA ELECTRIC INDUSTRIAL CO LTD
CD Whittle instructed by Kingsley Napley for the Plaintiff
Michael Silverleaf QC instructed by Linklaters & Paines for the Defendants
Hearing date(s): 18 and 19 December 1997
I direct pursuant to RSC Order 68 rule 1 that no official shorthand note shall be taken of this judgment and that copies of this version as handed down may be treated as authentic.
Judgment Date: 21st January 1998.
1. In this action for copyright infringement, the first defendant ("Panasonic") applies to have the action struck out under RSC Order 18 rule 19 on the grounds that it is frivolous or vexatious, or in the exercise of the court’s inherent jurisdiction. The second defendant ("Matsushita") applies under Order 12 rule 8 for an order setting aside service of the Writ.
2. The allegation of copyright infringement is made in respect of two circuit diagrams depicted as figures 3 and 4 of an article published in the Journal "Wireless World" in September 1982 by the plaintiff. He says that his copyright in those circuit diagrams is infringed by a circuit incorporated by Matsushita in certain amplifiers, compact disc players, radio tuners and cassette decks and sold under the mark "Technics" by Panasonic in the United Kingdom. These are the two circuit diagrams relied on.
Fig 3. Basic circuit of Class A amplifier. A2 is current amplifier.
Fig. 4. Addition of power stage to augment A2 output current forms working circuit.
3. I believe that diagrams of this sort are not readily comprehensible to those who have no experience of them and their interpretation. In effect, they show the interconnection of various electronic components represented by conventional symbols Thus, represents the circuit element known as a resistor. Here it is provided with a reference (R2) so that its function can be described in the text. If digits appear by the symbol, they may give its value in appropriate units (for example, 5k2 means, I understand, 5200 ohms) or it may denote a particular type of device (2N5682 is a kind of transistor and appears by the side of the conventional sign for a transistor.)
4. These diagrams do not necessarily include one symbol per electronic component. Neither of the above diagrams includes a symbol for every electronic component which would be present in a working circuit. By way of example, below are two conventional signs for a so-called operational amplifier taken from the circuits sued on.
An operational amplifier is an assembly of many components. These components may be discrete; or the amplifier may consist of a single integrated circuit; or it may contain both discrete components and integrated circuits. It may take any number of forms. It must have an "inverting input" and a "non-inverting input" (denoted respectively by the - and + signs) and an output (at the right hand apex). Sometimes the - and + signs are omitted, and the connections for the current supply shown as well, as on the right hand symbol.
5. As I understand it, it is possible to indicate to an electronic engineer the principles on which a circuit works by providing him with highly schematic diagrams. Such diagrams will not indicate to him the precise values of all the components which he would need in order to construct a working version of the circuit, let alone a circuit which could be incorporated into apparatus which could be sold. But it would describe the overall scheme or architecture of the circuit which he must use. Both Dr Sandman's drawing are, as I understand it, of this type Figure 3 being the more abstract and figure 4 being rather more specific.
6. It is important to realise that from the point of view of the function of the circuit, the relative position of the symbols for the various components on the paper does not matter. What matters is that the components, and their interconnections, are shown. When the diagram is a detailed diagram of a working circuit, the relative positions of the components do not need to have, and generally will not have, an particular relationship with the relative positions of the components on the completed circuit. All that matters is that the specified components are interconnected in the manner specified in the diagram.
7. There are a number of observations about this short and very superficial discussion of circuit diagrams. The first is that it is not based on any expert evidence, but upon my own knowledge. I firmly believe that the affidavits filed on the present application would leave any person who was unacquainted with circuit diagrams not one whit the wiser as to what they were or what they meant. Second, while I believe it to be correct as far as it goes, I know it is incomplete, and I would obviously much prefer for it to be based on the evidence of an expert. Third, its purpose is to indicate in a rather superficial way that it is possible to recognise in circuit diagrams both specific circuits and descriptions of general concepts, and intermediate stages between these two extremes.
B. The law of copyright relating to circuit diagrams
8. There is a surprising lack of law relating to copyright in circuit diagrams. There is no doubt that the representation of a circuit diagram on paper can be entitled to copyright as an artistic work under section 4 of the Copyright Designs and Patents Act 1988. Such a copyright is infringed if the whole or any substantial part of the work is reproduced in any material form whether directly or indirectly - see sections 16(3) and 17(2) of the Act. It appears from the judgment of Jacob J inAnacon Corp Ltd v Environmental Research Technology Ltd  FSR 659 that such an artistic copyright is unlikely to be infringed by any defendant who copies the plaintiff’s circuit diagram to produce a diagram which has a wholly different visual appearance, notwithstanding that the technical content is identical. It is a corollary of this that a circuit produced from a circuit diagram will only reproduce that diagram in contemplation of law if the circuit and the diagram have some visual similarity, at least (for example) in terms of layout of the circuit board. In Anacon Jacob J expressly rejected the submission that it does not matter if the defendant’s circuit looks quite different from the plaintiff’s diagram, provided that it is the same circuit. Visual similarity is required. Jacob J based himself on the reasoning of the Privy Council in Interlego v Tyco  RPC 343 at 373, where Lord Oliver said this:
1. It is, however, submitted on behalf of Lego that the information contained by the figures [these were dimensional information appearing on the drawings] is an integral part of the drawing and as much an artistic work as the outline of the physical features of the article depicted. In this connection reliance is place upon a number of cases in which the significance of written material on a drawing has fallen to be considered in the context of whether that which has been translated into three-dimensional form is the drawing itself or the information contained in it. The question has arisen particularly in relation to the question whether a three-dimensional object produced from a drawing would appear to a non-expert to be a reproduction of the artistic work for the purposes of section 9(8) of the Act of 1956. It has been held, in considering that question, that an explanatory legend on the drawing the form of words or figures is not to be ignored (see
2. It has, however, to be borne in mind that all these cases were concerned with a very different question from that with which this appeal is concerned. It is one thing to say that the explanatory figures and legend, because they are of value (and, indeed, perhaps essential) to an informed understanding of the drawing, cannot be ignored in considering whether copyright in the drawing has been infringed by the making of a three dimensional article or whether the article would appear to a non-expert to be a reproduction of the drawing. It is quite another to say that explanatory material, in the form of words or figures, which are clearly the subject of literary copyright, can confer upon an artistic work an originality which it does not possess in its own right. It has always to be borne in mind that infringement of copyright by three dimensional copying is restricted to artistic copyright (section 48(1) [of the 1956 Act]). (This is also true of the 1988 Act - see section 17(3).) To produce an article by following written instructions may be a breach of confidence or an infringement of patent, but it does not infringe the author’s copyright in his instructions. This is a distinction of crucial importance and it is well brought out in the following passage from the judgment of Buckley LJ in Catnic Components v Hill & Smith Ltd.  RPC 183 at 223:
"I do not question the principle that in deciding whether what has been reproduced by an alleged infringer is a substantial part of the work allegedly infringed, one must regard the quality (that is to say the importance) rather than the quantity of the part reproduced (see Ladbroke (Football) Ltd v William Hill (Football) Ltd  1 WLR 273 per Lord Reid at page 276 and per Lord Pearce at page 293); but what is protected is the plaintiffs’ ‘artistic work’ as such, not any information which it may be designed to convey. If it is said that a substantial part of it has been reproduced, whether that part can properly be described as substantial may depend upon how important that part is to the recognition and appreciation of the ‘artistic work’. If an ‘artistic work’ is designed to convey information, the importance of some part of it may fall to be judged by how far it contributes to conveying that information, but not, in my opinion, by how important the information may be which it conveys or helps to convey.What is protected is the skill and labour devoted to making the ‘artistic work’ itself, not the skill and labour devoted to developing some idea or invention communicated or depicted by the ‘artistic work.’. The protection afforded by copyright is not, in my judgment, any broader, as counsel submitted, where the ‘artistic work’ embodies a novel or inventive idea that it is where it represents a commonplace object or theme."
3. The essence of an artistic work (to adopt the workds of Whitford J in " Rose Plastics GmbH v William Beckett & Co (Plastics) Ltd [now reported  FSR 113] is that which is "visually significant""
9. Accordingly Jacob J held that it is not sufficient merely for the information contained in the artistic work to be used in the alleged infringement.
10. In summary, Jacob J recognised that because the circuit diagram consisted of conventional symbols set out so as to describe an electrical circuit, it could be said to be a literary work, because section 178 of the 1988 Act defines writing to include ‘any form of notation or code, whether by hand or otherwise and regardless of the method by which or medium on or in which it is recorded’ and in the Act ‘written’ is to be construed accordingly. By section 3(1) ‘literary work’ means any work, other than a dramatic or musical work, which is written, spoken or sung. So a circuit diagram as a whole is a literary work. But a difficulty arises, which Jacob J refers to, but does not decide, when one comes to consider infringement of the copyright in such a work. Another circuit diagram on paper, or stored in computer, or a written list of components and interconnections (the case in Anacon) will infringe the literary copyright, but what about the circuit made according to this circuit diagram - is it a reproduction or not? The difficulty lies in the passage from Lord Oliver’s opinion which I have quoted above: infringement of two-dimensional works by three dimensional articles is restricted to artistic works: see now subsections 17(2) and 17(3) of the 1988 Act. Although Jacob J did not decide the point, at first sight it might be thought that there is no way out of this difficulty, if one accepts that a literary work is two-dimensional, but I suspect that the proper answer is that the circuit itself is a reproduction because it still contains all the literary content of the literary work, albeit in a form which would require analysis for it to be extracted. But the answer to this question might turn on the facts.
11. In Electronic Techniques (Anglia) Ltd v Critchley Components Ltd  FSR 401, Laddie J was confronted with an application for summary judgment in a claim for infringement of the copyright in certain circuit diagrams. The diagrams were (I believe) of the simplest character (see page 405 for an example) but he dealt with certain questions of principle. He pointed out (see page 412) that correct legal categorisation of a work was important because the incidents of the copyrights which subsist in different categories of work are very different. Of particular importance in the industrial context is the fact that copyright in a literary work subsists for the life of the author plus 70 years. Laddie J says that a single work must be categorised, and it is not possible for two distinct copyrights to subsist in the result of a single creative effort. He says that it does not appear from Anacon that Jacob J considered that the interconnections between the components denoted by the lines (pure graphics and therefore on the face of it part of an artistic work) formed part of the literary work considered by Jacob J, and that the work infringed was accordingly merely a list of components, no regard being paid to the manner of their interconnection. As he put it,
. . . the interconnecting lines do not form part of the literary matter in the circuit diagrams for copyright purposes.
12. I have had some difficulty in being certain that Jacob J did not consider the interconnects. I am far from confident that he rejected any part of the argument which Laddie J quotes:
[Counsel for the plaintiff] says: "Well, if one looks at the circuit diagram it is more than just visual information, it is in fact technical information containing a lot of writing-a lot of writing altogether-against each component, being the information as to what it is, and an indication in visual form of what other component each component is connected to" [my emphasis]. He says, in effect, that the circuit diagram is a list of components together with information as to how they are connected together.
13. I believe that Jacob J's reference to musical notation is particularly relevant. If it is legitimate to look at the written symbols for the components to ascertain the nature of the components which they represent, I have considerable difficulty in seeing the lines which interconnect the symbols on a circuit diagram as anything other than symbols for interconnections, which themselves find a place on the list of components together with an indication of their starting points and ending points, to identify them. It is clear that there are, for example, different notations for connections which cross over each other and those which themselves are connected together: see the small
sketch above. Nor do I accept (although I have not had full argument on the point) that it is necessarily right to say that it is only in borderline cases that a choice must be made in characterising a work. A calligraphic work in which the calligraphy is part of the work (say an e e cummings poem about a cat in the shape of a cat, or a chinese calligraphic work) is, I would have thought, plainly both literary and artistic, and two copyrights must subsist. If there is an inconsistency between what Jacob J and Laddie J have said, I prefer Jacob J's approach. But I do not believe that it is either right or necessary to express a concluded view at this stage.
C. The pleaded case.
14. The pleaded case is largely in standard form. The alleged infringements identified in paragraphs 7 and 9 include both the various items of electronic equipment themselves but also the circuit diagrams in the service manuals for the defendants' equipment and in the brochure for 1995/95. This is the diagram labelled "MOS classAA" which I have reproduced.
D. The defendants' application to strike out
15. So far as the grounds itemised in the notice of motion are concerned, the defendants say (1) they did not copy (2) their circuits are not sufficiently similar electronically to figures 3 and 4 for there to be infringement (3) their circuits are not sufficiently similar visually to figures 3 and 4 for there to be infringement. While not expressly abandoning ground (1), Mr Silverleaf QC advanced his application primarily on the basis that 'the objective similarity between Dr Sandman's circuits and those used by the defendants is not sufficient to support a claim for infringement of copyright' and that this is a contention which can, and should be decided now.
16. Evidence is advanced in support of this application in the shape of an affidavit of Dr Green, who is the Head of Research and Reader in Photonics Systems at the Electronic Imaging and Media Communications Unit at Bradford University. In brief, he says that he has made detailed analysis of the Figure 3 and 4 circuits, and of the defendants' class AA circuits (this is the term which the defendants use indifferently to describe the general structure of all the allegedly infringing circuits) and from these circuits he advances as his first contention that the circuits on which the plaintiff relies as showing the similarity between the figure 3 and 4 circuits and those of the defendants do not show a similarity would not be self-evident to a person skilled in the art (paragraph 8). His conclusion is worth quoting in full:
4. It is my conclusion that the Defendants' circuit bears very little visual similarity and only a superficial functional similarity to the Plaintiff's circuit. The circuits use different component values and types and operate in very different ways. The operation of the Technics circuit is far superior to that of the Sandman circuit and I do not consider the Sandman circuit capable of practical application. The differences [there is an obvious misprint in the affidavit at this point] between the two circuits are such that I consider that it is inconceivable that the Technics circuit has been "copied" from the Sandman circuit or that "it has been designed with reference to the Sandman Circuit in any way.
17. It appears, therefore, that his evidence was primarily directed to the allegation of copying. Mr Jikoh, the designer of the circuit states how he says the design came about, and produces circuit diagrams of the relevant Technics circuits.
18. The evidence is met by an affidavit from Professor Sandler, the Professor of Signal Processing in the Department of Electronic Engineering of King's College (University of London). His relevant conclusions may be abstracted as follows:
"[Paragraph 22] Plainly Dr Green is right to say that different components and values are used in the Technics SE-A100 amplifier when compared with Figure 4 of Sandman. However the values of the components in the Technics circuit are so chosen that fundamentally the circuit is still able to operate in the same way as the Sandman circuit.
[paragraph 23] I disagree with Dr Green's comments under the heading functional similarity. The similarity is not 'superficial' and the connections between the components and the bridge are not 'fundamentally' different. The behaviour and operation of the Technics circuit is primarily defined by the fact that it uses the same structure as the Sandman circuit ".
5. As a matter of electronic engineering, I have no hesitation in saying that the Technics 'class AA' circuit as shown in Exhibit 'RJG 5is fundamentally the same as the 'Class S' circuit shown in figures 3 and 4 of Dr Sandman's article, with the alternative feedback arrangement described in the text."
19. Professor Sandler says that the brochure diagram which I have reproduced above shows that the defendants' circuit is the same in principle as Dr Sandman's figures 3 and 4. Some similarity in interconnection is apparent, on a purely visual basis. So far as Mr Jikoh's affidavit is concerned, he expresses the view that the suggestion that Mr Jikoh copied the Sandman circuits more plausible than the design process that Mr Jikoh describes. Of course, I cannot resolve these issues. I must therefore accept that what Professor Sandler says is true for the purposes of this application. I must also bear in mind that he is responding to evidence already filed, and not advancing all the evidence which would be adduced at any trial.
20. I have already stated that a circuit diagram may be to a greater or lesser extent conceptual. The analogy with a literary work is that it may be merely the equivalent of a plot: or of a detailed plan; or of a first draft; or of a final draft.
21. I accept Mr Silverleaf's submission that there is no (or almost no) visual similarity between the circuit diagram of the alleged infringements (other than the brochure diagram) and that shown by Dr Sandman in his figures 3 and 4. If I was confident that the matter stopped there, and that a mere visual rearrangement of components to produce an electronically identical circuit diagram would avoid infringement, this might be a proper case for striking out. But I do not think that the matter does stop there as the law presently stands. Even the correct characterisation of the works sued on, and the scope of the relevant copyright or copyrights, are not certain. The test of comparison is not definitely a visual test, and the degree of similarity which will support a finding of infringement is not clear. For the purposes of this application only, Mr Silverleaf concedes (paragraph 3.6 of his skeleton argument) that there is a similarity at the level of concept. He appears to concede that there is an arguable resemblance 'at the level of operational principle' which I take, from its context (paragraph 3.3 of his skeleton) to be a lower level than 'concept'. It is quite clear that in the more conventional literary context, 'where a substantial amount of the details of a plot or scenario are copied, the misappropriated material being original, there will be infringement even though the original author's language is not taken.' (see Laddie Prescott and Vitoria, The Modern Law of Copyright, 2nd Edn. 1995 paragraph 2.88, and see also paragraph 2.89). I am clearly of the view that this is a question of mixed fact and law which can only properly be resolved at trial. It may be that the judge hearing the action will say that the 'plot' cases have only a limited application to cases such as the present or that they are wholly irrelevant. He may say that no relevant literary copyright subsists at all: but without even a clear idea of the degree of similarity between the circuits sued on and the alleged infringements in the present case further speculation is pointless.
22. InStrix v Otter  FSR 354 the Court of Appeal refused to strike out a claim of patent infringement in circumstances which appeared considerably more straightforward than those to be found in this case. Dillon LJ warned, as Danckwerts LJ had warned in Wenlock v Moloney  1 WLR 1238, against conducting trials on affidavits. It is worth remembering that the case sought to be struck out in Strix v Otter (and struck out at first instance) succeeded at trial and there was, in the event, no appeal. It may be that in modern times a court will, in fact, be more willing than in the past to strike out a claim on the ground that it is vexatious because it is bound to fail, but that jurisdiction has to be exercised with the greatest care and it must be remembered that even a strongly held preliminary view may be wrong, or held in respect of a matter upon which reasonable tribunals may differ. I believe that this case is about as far as possible from one that it is proper to strike out. It certainly cannot be said that Dr Sandman is certainly bound to fail.
23. I should mention two specific submissions made by Mr Silverleaf QC. The first was that as a general proposition copyright 'protects only embodiments of a principle, not the principle itself' which can be protected, if at all, by a patent. Dr Sandman was attempting to protect only a principle of operation of his circuit, and therefore should fail. I do not find this kind ofa priori approach helpful. Jacob J has already warned against accepting the idea/expression dichotomy in UK copyright law (see Ibcos Computers Ltd v Barclays Mercantile Highland Finance Ltd  FSR 275 at 289ff) and, of course, as is said in the passage quoted by Jacob J, it all depends on what you mean by 'idea'. Any circuit diagram is an assembly of ideas: the question is, how general is the idea which is said to have been copied-is it too general to be the subject of copyright protection? I do not think that in a case like the present, where my technical knowledge falls very far short of that required really to understand the circuits in question, I can begin to answer this question without proper help from experts at trial particularly as the experts appear to disagree as to how the circuits work. Indeed, even if I thought I did understand the circuits, I do not think that it could ever be right to act on that understanding alone.
24. The second submission was that the copyright in a literary work which is not a work of fiction cannot be infringed by taking the plot. Again, as a general proposition, this has to be viewed with caution. It is generally difficult to identify a plot in a work of non-fiction: but it may (for example) be possible to identify a new thesis in a work of history. InRavenscroft v Herbert  RPC 193 Brightman J said (page 206 line 40) that an author is not entitled , under the guise of producing an original work, to reproduce the arguments and illustrations of another author so as to appropriate to himself the literary labours of that author. It is certainly a question of degree.
25. Accordingly, I reject the application to strike out the statement of claim.
E. The application to set aside service on Matsushita
26. Leave to serve the amended Writ on Matsushita was obtained from Master Dyson on the basis of the affidavit of Mr Osborn, Dr Sandman's solicitor. This affidavit is thin in the extreme. The only basis is that Panasonic is a company duly served within the jurisdiction and Matsushita is a necessary and proper party to the action the defendants being joint tortfeasors, the 'first defendant as the distributors of infringing items in the United Kingdom and Matsushita as the manufacturer of those items.' This means that leave to serve out was obtained either pursuant to Ord 11 r1(1)(c) or r1(1)(f). In purported compliance with r4(1)(d) Mr Osborn deposes to the fact that 'he is advised by Counsel and verily believe that the plaintiff has a good cause of action against Matsushita in respect of the matters aforesaid'. This can only relate to the issue of joint tortfeasance, and the basis of that allegation is merely the facts alleged in the statement of claim: there is no attempt to prove them.
27. It is well settled that the plaintiff must show a good arguable case that the claim falls within one of the subparagraphs of Order 11 rule1(1). He must then show that it is a proper matter for service out of the jurisdiction (see Order 11 rule 4(2)). Essentially the matters relied on are set out in paragraph 12 of the Statement of Claim. These are (1) Panasonic is under the control of Matsushita (2) the equipment complained of was manufactured by or to the order of Matsushita for the purpose of sale in the United Kingdom by Panasonic (3) it was supplied by Matsushita for that purpose and (4) was sold in the UK under the brand name Technics which is a brand name of Matsushita, and is the name Panasonic. These facts are not sufficient without more to establish a good arguable case of joint tortfeasance. They may raise a suspicion, but they do not provide a case
28. The application to set aside is decided on all the evidence as it appears at the time of the hearing. I therefore take into account all the evidence which has been advanced by Dr Sandman, by Mr Mitomo of Matsushita and by Mr Hamblin of Panasonic. Mr Hamblin says that it is Panasonic's choice which products manufactured by Matsushita are sold by Panasonic. He says that Matsushita does not exercise day to day control in the conduct of Panasonic's business. Mr Mitomo confirms what Mr Hamblin says. Dr Sandman says (and this is not in dispute) that the products in suit are specifically adapted for sale in the UK by Matsushita; that the amplifier of which he has a sample has components specific to the UK market (not merely a power lead); that the brochures say that the products are designed 'for the faultless reproduction of music to the British taste' and that the brochures plainly suggest that they originate with Matsushita, including having quotations from Japanese design staff in them.
29. Mr Silverleaf submits, correctly, that ownership and an ability to control a subsidiary is not evidence of joint tortfeasance. He bases himself on the decision of the Court of Appeal inUnilever v Chefaro  FSR 135. As Laddie J said in The Mead Corporation v Riverwood International Corporation  FSR 484, the fact that a parent regarded itself and its subsidiaries as a single economic entity is neutral, and that to show a common design more than mere approval of a subsidiary's activities has to be shown. Laddie J identified the core of the Chefaro decision as being the following paragraph in the judgment of Glidewell LJ:
6. In order to show infringement by common design it is necessary to show some act in furtherance of the common design-not merely an agreement. The issue, therefore, before the judge and this court is: does the evidence show a good arguable case that there was such a common design and/or that Akzo had procured or assisted Chefaro to infringe the patent?
7. I do not accept that when Mustill LJ [in
30. As Laddie J put it, it is necessary to show that the parent company did more than look on with approval at the acts of its subsidiary in the United Kingdom. In the present case, the only fact which might be thought to show some degree of involvement on the part of Matsushita in the allegedly infringing acts in this county is the adaptation of the allegedly infringing apparatus for the UK.
31. It must not be forgotten that "joint infringers are two or more persons who act in concert with one another pursuant to a common design in the infringement" (see the speech of Lord Templeman inCBS v Amstrad  RPC 567. So, says Mr Whittle, Matsushita manufacture the United Kingdom version of the equipment at the request of Panasonic for the purpose of sale by Panasonic in the United Kingdom. Control, or the opportunity for it, by Matsushita over the acts of Panasonic is only marginally relevant: both companies play their part in producing a specifically United Kingdom-orientated product, and they both intend and agree that the product should be sold in the UK.. But it has to be remembered that any number of acts merely facilitating the commission of a tort in the United Kingdom is not enough, even if the person doing those acts knows of the tort: see Innes v Short 15 RPC 449 and the judgment of Mustill LJ in Unilever v Gillette. In summary, therefore, (1) the tort is sale of the allegedly infringing articles in the UK with the requisite knowledge (2) the primary tortfeasor's supplier manufactures the articles to his order, specifically adapted for sale in the United Kingdom and (3) the primary tortfeasor, while not under the direct day to day control of the manufacturer, is indirectly wholly owned by the manufacturer, is potentially under his control and (4) himself trades under, and supplies goods bearing, marks which are associated with the manufacturer.
32. In my judgment, what distinguishes this case from theUnilever v Chefaro and Mead v Riverwood line of cases, in which control, or supposed control, over the subsidiary is relied on alone, is the element of specific manufacture and supply. I believe that manufacture specifically to meet the requirements of the particular market in the UK, together with common group membership, are circumstances from which the judge at trial may well draw the inference of participation in a common design. In coming to this conclusion I do not ignore the evidence of Mr Hamblin and Mr Mitomo, but that evidence does not directly meet the point that the articles in question are specifically produced for the United Kingdom market.
33. I have felt considerable doubt over this aspect of the case and my opinion changed more than once in the course of the argument, but in the result I have come to the conclusion that I should not set aside the leave granted by Master Dyson. Accordingly, both the defendants' applications fail.