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Cite as: [2013] IESC 28
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Judgment Title: Koger Inc. and Koger (Dublin) Ltd v O'Donnell & others Neutral Citation: [2013 IESC 28 Supreme Court Record Number: 422/10 High Court Record Number: 2008 4333 P Date of Delivery: 18/06/2013 Court: Supreme Court Composition of Court: Murray J., Clarke J., MacMenamin J. Judgment by: Clarke J. Status of Judgment: Approved
Outcome: Dismiss | ||||||||||||||||
THE SUPREME COURT [Record No: 422/2010] Murray J.
Koger Inc. and Koger (Dublin) Limited Plaintiffs/Appellants and
James O’Donnell and Roger Woolman and David Gross and HWM Financial Solutions Limited Defendants/Respondents Judgment of Mr. Justice Clarke delivered the 18th June, 2013. 1. Introduction 1.2 The first named plaintiff (“Koger Inc.”) is incorporated in Slovakia and developed a highly successful software program designed for use in the financial services industry. The program in question was called NTAS. The plaintiffs (collectively “Koger”) own copyright in that program. The first three defendants/respondents (“the personal defendants”) were former employees of Koger while the fourth defendant/respondent (“HWM”) is a company established by the personal defendants. Having left the employment of Koger and established HWM, a rival software called ManTra was developed. In essence, when these proceedings were commenced, Koger alleged that the personal defendants had acted in breach of their duties as former employees by allegedly making improper use of confidential information and, in addition, that ManTra breached the copyright which Koger held in NTAS. The case was at hearing before the High Court (Feeney J.) for 34 days with judgment being delivered on the 8th October, 2010, (Koger Inc. & anor v.O'Donnell & ors, [2010] IEHC 350). Each of Koger’s claims was rejected. On this appeal, Koger did not seek to go behind the decision of Feeney J. on the question of breach of confidential obligation or allied matters. Koger confined itself to an appeal against the findings in relation to copyright. However, a major issue arose between the parties stemming from what was said by the defendants to be an attempt on the part of Koger to run the appeal on a basis wholly inconsistent with the case made in the High Court. That question, together with any consequences which might flow from this court being satisfied that the defendants' contentions in that regard were correct, was, therefore, logically the first issue which this court had to consider. In order to better understand that issue, it is appropriate to start by making some reference to the background facts. 2. Background Facts
2.3 The first named defendant/respondent, James O’Donnell (“Mr. O’Donnell”) first came into contact with NTAS and Koger Inc. when working in the Cayman Islands between 1995 and 1998. He was directly involved in the procurement and the testing of the then new NTAS system for his then employer, who became Koger Inc.’s then largest client. When Mr. O’Donnell left that employment, he agreed to act as a consultant for Koger Inc. and operate from their recently opened Dublin office. Mr. O’Donnell became an employee of Koger (Dublin) in 2002, following its incorporation, and a director of that company in January 2003. This employment and directorship continued until the 30th April, 2006, when he resigned. Feeney J. described Mr. O’Donnell as being “in effect, during the years of his employment, the senior person employed by the company and was responsible for the running of the Dublin office”. 2.4 The second named defendant/respondent, Roger Woolman (“Mr. Woolman”), worked with Mr. O’ Donnell for the same employer in the Cayman Islands. Mr. Woolman returned to Ireland in 1999 and was then offered a consultancy role in Koger Inc.’s Dublin office by Mr. O’Donnell, which he initially refused. However, in 2001, Mr. Woolman commenced providing accountancy services for Koger (Dublin) on a part-time basis. Mr. Woolman served as a director of Koger (Dublin) from its establishment in 2002 until the beginning of 2003, at which point he resigned and Mr. O’Donnell took up that position. Mr. Woolman continued to provide services to Koger (Dublin) on a consultancy basis until September 2006, albeit with a break in service for a period between 2003 and 2004. 2.5 The third named defendant/respondent David Gross (“Mr. Gross”), also worked in the Cayman Islands, at the same time as Mr. O’Donnell and Mr. Woolman, and all three knew one another. Mr. Gross returned to Ireland in 2000 and was approached by Mr. O’Donnell with an offer to work in the Dublin office. Mr. Gross accepted and began working for Koger Inc. as a senior analyst in April 2001. His employment transferred to Koger (Dublin) after its incorporation in 2002. In 2004, Mr. Gross ceased working for Koger. 2.6 A number of others who worked extensively with the NTAS program in Koger’s Slovakian office are also said to have been involved in the alleged wrongdoing, but are not parties to the proceedings. Marian Klco (“Mr. Klco”) worked for Koger from 1998 until March 2006. His evidence was that he was the driving force behind the redesign of the NTAS code over this period. Jana Potocnakova (“Ms. Potocnakova”) was another senior employee in the Slovakian office. By 2005, she was responsible for co-ordinating the NTAS programming work among the software developers. She handed in her resignation in February 2006 and was directed to depart immediately. Martin Madej and Ivan Mesarc were other former Koger employees who are also alleged to be involved. 2.7 The personal defendants together with Mr. Klco, Ms. Potocnakova and other former employees of Koger were involved in the creation and establishment of HWM. In December 2005, Mr. O’Donnell and Mr. Woolman registered the domain names www.hmwps.com and www.hwmsolutions.com. Feeney J. also noted that a meeting took place between the personal defendants in January 2006 where the possibility of setting up an independent company was discussed. In February and March 2006, more work was carried out by Mr. Woolman and Mr. Gross, including the preparation of a preliminary business plan and the obtaining of legal advice as to whether former employees of Koger would be restricted from establishing a rival firm or product. 2.8 At the beginning of June 2006, a meeting occurred in Slovakia, which has been described as a brainstorming session, at which the development of the NTAS competitor product, ManTra, was discussed. Present at this meeting were Mr. O’Donnell, Mr. Klco, Ms. Potocnakova, Martin Madej and Dylan O’Brien (another former employee of Koger (Dublin) who had resigned from Koger (Dublin) prior to the meeting but then recommenced working for Koger (Dublin) for a number of months after this meeting). This meeting lasted a number of days. Feeney J. described the next stages of the development process at paras. 67 and 68, where he stated:
In the first week of October 2006 there was a meeting of approximately a week’s duration held in Kosice to discuss the development of the ManTra product. That meeting was attended by James O’Donnell, Roger Woolman, Marian Klco, Jana Potocnakova, Martin Madej and Ivan Mesarc.”
3. The Trial in the High Court 3.2 The position in respect of breach of confidential information is different. Feeney J. sets out the position at para. 108 of his judgment:
“(4) Protection cannot be legitimately claimed in respect of the skill, experience, know-how and general knowledge acquired by an employee as part of his job during his employment, even though that will equip him as a competitor, or potential employee of a competitor, of the employer.” That judgment identified that the critical question to consider was whether the employer had trade secrets which could be fairly regarded as his property, as distinct from the skill, experience, know-how and general knowledge which can fairly be regarded as the property of the employee to use without restraint for his own benefit or in the services of a competitor. In considering that distinction, a court must examine all the evidence relating to the nature of the employment, the character of the information, the restrictions imposed or its dissemination, the extent of use in the public domain and the damage likely to be caused by its use and disclosure in competition to the employer.” 3.5 It follows that there are likely to be cases in the software industry where an employee would, as a matter of contract and under the law relating to breach of confidence, be entitled to exploit information in the nature of skill and expertise which had been acquired in a previous employment but would not be able to exploit the same information in the event that a former employer owned the copyright in the relevant material. On the other hand, it is also obvious that there might be cases where a former employee could make unlawful use of confidential information belonging to an employer or former employer but where no copyright or, indeed, other intellectual property rights as such, might exist in the confidential information concerned. It follows that, while there may, in certain circumstances, be an overlap, breach of copyright and wrongful use of confidential information are separate concepts which are by no means co-extensive. It is, as has been pointed out, possible that there could be a breach of copyright in circumstances where there would be no wrongful use of confidential information and, likewise, there may be cases where there is a breach of confidence without there being a breach of copyright. It is against that background that the two separate strands of the case which Koger brought before the High Court need to be viewed. 3.6 In passing it should be noted that Koger initially alleged that there had also been copyright infringement of a related computer software program known as E*TAS. This claim is set out in an updated statement of particulars that had been served on the 8th June, 2009. However, this claim was later abandoned and this was acknowledged by counsel for Koger during the opening of the case. No explanation was given for this course of action. 3.7 The claims pursued at trial are summed up in para. 23 of the High Court judgment as follows:
“The facts of this case are a paradigm example of abuse of confidence/copyright infringement in relation to commercial secrets in a software business. It is the plaintiffs’ case, in short, that the defendants developed the ManTra software by ‘reverse engineering’ the plaintiffs’ NTAS software. It is the plaintiffs’ case that the defendants have sought to ‘springboard’ into a very specialised market, service by technically complex software solutions, through the unauthorised copying and reliance upon the plaintiffs’ software.”
… 4. The making of the unauthorised copy of NTAS constitutes an infringement of the Plaintiffs’ copyright under the 2000 Act. Further, the use of the unauthorised copy of NTAS as described in the development of ManTra constitutes the adaptation of the NTAS product within the meaning of Section 37 of the 2000 Act thereby infringing the Plaintiffs’ copyright in the NTAS product. 5. Further and in the alternative, the said use of the NTAS product constitutes a misuse of confidential information and ManTra consists of the fruits of such misuse.” 3.10 No case was, therefore, put to the High Court which suggested that there might, separately, be a claim available to Koger in breach of copyright, in the alternative, even if the court were not satisfied that an actual copy of NTAS had been taken but rather that those working on the development of ManTra were able, because of their intimate involvement in the development of NTAS, to remember important aspects of the NTAS software and, thus, reproduce much, if not almost all, of Koger’s software from memory. That breach of copyright can be established where copying is done from memory, rather than by having a physical copy of the work to which copyright attaches, cannot be doubted and was not contested, as a matter of principle, by counsel on behalf of the defendants on this appeal. The problem, however, is that a case of copying by memory was not made by Koger in the High Court. Indeed, the opposite is the case. 3.11 It must be recalled that the text of the revised statement of claim was drafted in circumstances where significant controversy had already arisen concerning the parameters of Koger's case. Paragraph 2 of the revised claim defines the term "unauthorised copy of NTAS" as meaning a copy of the NTAS product which was actually taken by the personal defendants and used for the purposes of developing ManTra. Likewise, the claim of using an adaption of the NTAS product in breach of s. 37 of the Copyright and Related Rights Act 2000, is made by specific reference to the use of an unauthorised copy as so defined. Not only, therefore, is there no reference to an allegation of any form of breach of copyright by virtue of copying from memory, but rather the claim as reformulated expressly confines itself, so far as the breach of copyright claims are concerned, to the use of an unauthorised copy in the way in which that term was defined. In substance, Koger expressly excluded from its reformulated claim any reliance, in furtherance of its breach of copyright claim, on copying other than in the context of an actual copy of the NTAS produce having been taken. Furthermore, it is clear that the claim as so reformulated expressly placed reliance on an assertion that ManTra could not have been developed as quickly as it was without access to and use of such an unauthorised copy. 3.12 One of the key questions which now arises is as to whether it is open to Koger to seek to persuade this court to remit the matter back to the High Court to allow it to make what would, it was conceded, be a significantly different case to the one which it earlier ran and lost. Before going on to consider that issue, it is next necessary to turn to the findings of the trial judge. 4. The Findings of the Trial Judge
4.2 Feeney J. made a number of findings in respect of George Sipko’s treatment of his employees. Particularly, in relation to Koger’s employees in the Slovakian office, the court found that they were “subject to personal abuse, arbitrary action and a feeling of insecurity in relation to their continued employment”, and accepted this was the reason for the departure of many of those alleged to have been involved in this conspiracy, and not any inducement by Mr. O’Donnell to participate in any conspiracy. 4.3 The Court describes the steps taken by the defendants between December 2005 and March 2006, as set out in para. 2.7 above, as being “of a preliminary nature taken in circumstances where a future decision might be taken to set up such a business or to create such a product” and, as such, they were found not to be indicative of a conspiracy on the part of the personal defendants. The contention that Mr. O’Donnell’s visit to Slovakia in January and February 2006 was in furtherance of the alleged conspiracy was also rejected. The Court was also satisfied that Mr. O’Donnell did not prolong his employment with Koger (Dublin) in an attempt to aid the conspiracy. The development of ManTra was held to have commenced at the June 2006 brainstorming session and no earlier. 4.4 Koger relied on the speed in which ManTra was developed as evidence of the fact that the defendants had an unauthorised copy of NTAS available to them. In essence, Koger contended that it would be impossible to develop ManTra in the time available without the benefit of an actual copy of NTAS. This was referred to as a “deductive inference”. This submission was rejected at para. 63:
4.6 Koger had suggested that there were two main areas where copying had occurred, being the World-Check interface and the fee calculations function. Both of these contentions were also rejected by the trial judge. In relation to World-Check, Feeney J. again referred to the fact that the knowledge and expertise of the programmers was such that access to a copy of NTAS was not necessary. Any similarities in column names “emanated from a common source rather than from the use of NTAS.” The court held that ManTra’s fee calculations method was sufficiently different to disregard the argument that it had emanated from an NTAS copy. In any event, the trial judge found that the fee calculation methods used were not protected by copyright. 4.7 It had also been submitted by Koger that there had been a replication of some of the errors in NTAS within the ManTra product and that this was further evidence of the use of an unauthorised copy of NTAS in the design of Mantra. Feeney J. dismissed this argument at para. 86 of his judgment:
4.8 As noted in section 3 above, Feeney J. dealt with the claim in accordance with the updated statement of claim. The sole emphasis of that updated claim was that the ManTra developers had access to, and use of, an unauthorised copy of the NTAS program. No separate contention was made therein that there could have been copying from memory or without the assistance of the actual NTAS program. In those circumstances and taking into account the evolution of the appellant’s claim over the course of the hearing, Feeney J. focused solely on the argument as set out in the statement of claim. His ultimate findings on these and related matters can be seen in para. 106, where he stated:
4.9 Similarly, the claim that Mantra constituted an unlawful adaptation of the NTAS program was also premised on the contention that there was access to, and use of, an unauthorised copy of NTAS. Therefore, once the argument in relation to direct copying was dismissed, the court held that it followed that this aspect of the claim also had to fail. However, the court did proceed to examine whether it could be said that there had been an adaptation but rejected this contention on the basis of the evidence. 4.10 The separate but related claim in relation to misuse of confidential information was also dependent on a finding that there had been access to an actual copy of NTAS. This is clear from para. 108 of the High Court judgment where the following is stated:
4.12 Against that background, it is necessary to turn to the case which Koger sought to make on this appeal. 5. The Basis of Koger’s Appeal 5.2 Notwithstanding that, it is important to record that much of the materials which were included in the books of documents for the hearing of the appeal were not, ultimately, referred to. In addition, significant additional documentation, not included in the books of appeal, were handed in at the beginning of ,or in the course of, oral argument, not least a significant set of documentation on the Koger side made available at the beginning of the hearing. It does need to be said that it is becoming increasingly essential (given the limited court time available in the context of the large number of appeals requiring hearing) that everything possible is done to ensure the most efficient conduct of oral hearings. There is an obligation on all parties to engage with each other in an attempt to put before the court all but only those materials (whether pleadings, transcript extracts, documentary evidence or legal materials) which the court will really have to consider for the purposes of conducting the oral hearing and coming to a fair decision. While it must be acknowledged that it will be rarely possible to get things exactly right (given that cases can take their own turns at hearing), nonetheless, it is to be hoped that a situation will be arrived at where, for cases such as this, the court will be presented with only those materials which one or other side believes are necessary to the courts real consideration and either referred to directly or indirectly in the written submission or likely to be referred to in oral argument. The time may well come where the court may be required to impose penalties in respect of costs in cases where there is a significant failure to provide the court with the appropriate materials in an appropriate form. These comments should not be taken as a criticism of the parties to this case who were, after all, participating in an experimental procedure and, it must be recorded, engaged actively and appropriately with the court in attempting to put suitable measures in place. 5.3 Against the background of the micro-management of this case, it is fair to say that the written submissions filed went through, at the courts suggestion, a number of editions not least because, from the beginning, the position adopted on behalf of the defendants was that Koger was seeking to make, on the appeal, a case which it was not entitled to do. Indeed, in that context it should be recorded that Koger brought an application before the courts seeking leave to admit additional evidence, which application was refused. 5.4 By the time the appeal came to trial, counsel for Koger conveniently grouped his arguments under five headings:-
2. It was argued that the trial court inappropriately dismissed Koger’s evidence concerning certain similarities between the respective software systems. In that context it should be noted that it was argued by the defendants in the High Court that an inference of copying should not be drawn from certain similarities alleged between the respective software programs on the basis that relevant materials were either in the public domain or derived from third parties. It was said that the trial judge ignored Koger's evidence of other similarities not attributable to publicly available information or third parties; 3. It was said that the court incorrectly considered that similarities between the two software programs could be discounted on the basis of the programs having the same functional necessity; 4. As a corollary to point 3, it was said that the trial judge wrongly discounted similarities as deriving from “the same common conceptual language”; and 5. It was said that the court wrongly failed to consider whether there could be a breach of copyright by copying from memory such that the court, having found as a fact that the defendants did not have a physical copy of the NTAS software, wrongly, it was argued, concluded that copying had not taken place. 5.6 In order to fully appreciate the case sought to be made on behalf of Koger on this appeal, it is necessary to say just a little about the normal process which a court is likely to follow while considering a breach of copyright case. While it will be necessary to refer, to some extent, to the relevant legal principles in due course, it is fair to say that, at a very general level, the process is that a plaintiff will seek to place before the court evidence of sufficient similarity between the allegedly offending material and the material in which copyright is said to lie, together with evidence of the defendant having had an opportunity to actually copy. If sufficient evidence of such matters is placed before the court then the evidential burden may shift to the defendant to provide some innocent explanation which may, of course, take the form of drawing attention to publicly available or third party materials, which can provide an explanation for any relevant similarities or may seek to explain similarities as being derived not from copying but rather from some functional necessity. 5.7 In essence, the case which Koger sought to urge on this Court was that the High Court should have considered whether an opportunity to copy arose from the ability of the personal defendants to copy from memory and whether, when coupled with such similarities as had been established between NTAS and ManTra, the combined effect of that opportunity and those similarities was sufficient to shift the burden of proof. Furthermore, it was suggested that if the trial judge had conducted his analysis on that basis, his approach to determining whether any inference of copying had been displaced by the existence of publicly available or third party materials or functional necessity would have been different. On that basis, it was said that the overall approach of the High Court judge was wrong with each of the five points made being aspects of that general complaint. However, it must be recalled that the only case for copying which was pursued on behalf of Koger, subsequent to the filing of the revised statement of claim to which reference has been made, was a case of copying from an unlawfully taken version of NTAS. 5.8 In that regard it seems to me that counsel’s concession was necessary. There is no basis on which this Court could have concluded, on the basis on the way in which the case was run before the High Court, that Koger should have won. The only conceivable conclusion, favourable to Koger, could be that Koger should be given an opportunity to run the case again on a different basis. In order to understand why that was so, it is necessary to return to the way in which the case evolved while at hearing before the High Court. 6. The Reformulation of the Case before the High Court 6.2 It also needs to be noted that the independent witnesses called on behalf of Koger did not assert any competence to deal with questions concerning other forms of similarity between the respective programs. This can be seen from the following exchange between Feeney J. and Mr. Harry Goddard (the relevant expert) on day 24 of the High Court hearing. “Q. …Fine if you cannot answer the next series of questions feel free to say that you cannot, but they potentially could be of assistance to me. Can you tell me, from your examination of NTAS and ManTra, anything in ManTra which you say you can identify as having been copied from NTAS?
Q. Can you identify similarities? A. I don’t think I can answer that. I understand that there are functional similarities in both products, but that is not my area of expertise. Q. You cannot. In relation to whether any such similarities might exist, whether they are a functional necessity, your answer to the previous question will also answer this one for me? A. It will, yes.” 6.4 It must also be recalled that the basic building blocks of a claim for breach of copyright normally involve a plaintiff in persuading the court that the combination of whatever opportunity the defendant might have had to access to the allegedly copied material, coupled with whatever similarities could be identified between the material in which the copyright subsists and the allegedly infringing material, gives rise to an inference of copying. It is in that sense that most of the points sought to be raised on behalf of Koger on this appeal arise. It is undoubtedly true that there is authority for the proposition that the burden of proof may shift. Feeney J. refers to such authority at para. 107 of his judgment where he said the following:-
“For infringement there must be copying. Whether there was or not is a question of fact. To prove copying the plaintiff can normally do no more than point to bits of his work and the defendant’s work which are the same and prove an opportunity of access to his work. If the resemblance is sufficiently great then the court will draw an inference of copying. It may then be possible for the defendant to rebut the inference – to explain the similarities in some other way. For instance he may be able to show both parties derived the similar bits from some third party or material in the public domain. Or he may be able to show that the similarity arises out of a functional necessity – that anyone doing this particular job would be likely to come up with similar bits. So much is common ground between the parties. The concept of sufficient similarities shifting the onus onto the defendant to prove non-copying is well recognised in copyright law.” 6.6 Furthermore, the reformulation of Koger's case needs to be seen against the background of the fact that there were potentially conflicting difficulties with the two strands of its case, being the copyright strand and the breach of confidence strand. If it could have been established that any of the personal defendants or, indeed, others working on the production of ManTra, had available to them a copy of the NTAS, then Koger's case for breach of confidence would have been significantly strengthened. This would have been so irrespective of whether copyright could be shown to subsist in any specific elements of NTAS which had similarities in ManTra. As pointed out earlier, copyright and breach of confidence can apply in quite different circumstances, even though there may be a significant overlap. On the other hand, Koger's case on breach of confidence would be significantly weakened in the event that the court found that there was no actual copy of NTAS available, at the relevant time, to HWM personnel. While it would not, necessarily, provide a full defence in all circumstances, it would, having regard to the entitlement of employees to use their skill and knowledge even if acquired while working for a former employer, have placed Koger's case under that heading in a much weaker light. Koger was thus faced with a situation where there was a real risk that its claim for breach of confidence would be significantly weakened in the absence of a finding that HWM personnel had access to an illicit copy of NTAS while developing ManTra. The case as reformulated at the close of Koger's evidence needs also to be seen against that background. 6.7 While, therefore, a finding that an unauthorised copy of NTAS had not been taken might not, necessarily, have damaged the claim for breach of copyright, it could have had a significantly damaging effect on the claim for breach of confidence. Whether concentrating (possibly to the exclusion of all else) on a claim based on there being an unauthorised copy made tactical sense would, therefore, have depended in significant part on the extent to which the case for breach of copyright, independent of the method of copying, might have been seen, at the close of Koger's case, to have remained strong. If the case for breach of copyright (in the light of the concessions made by Koger's expert witnesses) had become weak, then there was an obvious tactical advantage in concentrating on the allegation of having taken an unauthorised copy for a finding of such unauthorised taking would have strengthened the breach of confidence claim which might, on that hypothesis, have looked the best bet for success. 6.8 There will, of course, be cases where a court will be able, without expert evidence, to assess similarity. However, to a greater or lesser extent, some breach of copyright cases may require the court to have the assistance of expert testimony to form an assessment of similarity and, in particular, whether any similarities identified could reasonably give rise to an inference of copying. Software programs are undoubtedly one such area. In a breach of copyright case where the copyright is said to subsist in a software program, it follows that expert evidence as to similarity will be important. It, likewise, follows that an assessment of the plaintiff's case made at the close of the plaintiff's evidence will, necessarily, focus, at least in material part, on the extent to which any independent expert evidence withstood cross-examination and whether the evidence, independent or otherwise, as it existed at the close of the plaintiff's case, might be sufficient to shift the burden of proof. 6.9 Thus the position which confronted Koger, in the events that happened at the trial, at the time when its evidence closed, was that there were potential difficulties with both strands of its claim. Its evidence of copying had been weakened to the extent that there was no independent expert evidence in favour of copying and it was forced to rely on the evidence of a witness whose credibility had been challenged. If copying could not be established then Koger's best chance of success would, undoubtedly, have lain in the direction of breach of confidence under which heading, of course, as has been pointed out, evidence of HWM personnel having an actual illicit copy of NTAS would have been extremely advantageous. The position adopted by Koger needs to be seen against that background. In that context, it is appropriate to turn to whether Koger should be allowed to argue its case on this appeal in a way which, on any view, differs significantly from the case made in the High Court. 7. A Different Case on Appeal?
7.3 As noted earlier, there is the potential for a shifting of the burden of proof in a copyright case. That much was acknowledged by Feeney J. by his citation of authority to that effect. However, it is no more than a shifting of an evidential burden. In such circumstances, and assuming that the defence goes into evidence, the role of the trial judge is ultimately to assess whether, in the light of all of the evidence, the plaintiff's case has been made out. Whether, had the plaintiff's evidence stood alone, same would have been sufficient to discharge the burden of proof will never formally be decided in the absence of an application for a non-suit. Likewise, there will be no formal determination of precisely how far the defendant has to go to displace the finding that might be made if the plaintiff's evidence stood alone. In such a case it is not, in my view, necessary for the trial judge to go through an exercise in deciding (and specifying in the judgment) what the position would have been had only the plaintiff's evidence been available. 7.4 I am not, therefore, satisfied, in any event, that there is any legitimate criticism of the approach adopted by Feeney J. under that heading. But even if there were some merit in this aspect of Koger's appeal, the evidence which any defendant would be likely to present to the court will inevitably depend on the state of the plaintiff's case when the plaintiff has completed its evidence. That will particularly be so where, as here, the plaintiff is required to specify with some precision the case then sought to be relied on at the close of the plaintiff's case. It would be a manifest breach of fair procedures to allow a plaintiff, having specified the case at that stage with some precision and at the request of the Court, and having, thus, coloured the defendant's approach to its presentation of the evidence, to then argue on appeal for an entirely different approach. If such were ever to be allowed it could only be on the basis, as was fairly conceded by counsel on behalf of Koger, that the case would have to go back for a retrial for any other course of action would be manifestly unfair. However, as pointed out by O'Donnell J. in Lough Swilly, a case where there would necessarily be new evidence which, in the light of the way in which the appeal was run, would necessarily be new evidence which could and should have been presented at the first trial, lies at the end of the spectrum where the Court leans heavily against allowing a new point to be argued. 7.5 In addition, it seems to me to be correct to characterise the points now sought to be relied on by Koger as being, at least in the main, points abandoned at the trial. The reformulation at the close of Koger's case cannot be seen as anything more than such an abandonment. In addition there were, objectively speaking, potential tactical reasons which might lead such an abandonment, as seen from the perspective of the close of Koger's case, as having been advantageous to Koger. As pointed out earlier, the assertion that there could not have been a timely development of ManTra without access to an unauthorised copy had the potential to strengthen, if the argument was accepted, Koger's case for breach of confidence. The effective abandonment of a claim for breach of copyright based on copying from memory must be seen in the light of the fact that its abandonment carried with it a potential strengthening of the case, asserted strenuously, that there must have been a taking of an unlawful copy. It is not for this Court to assess what actual tactical considerations were in the minds of Koger when it reformulated its claim. However, this is not the sort of case where one might be able to say that a claim was abandoned, necessarily and objectively speaking, in error. Rather there are, objectively speaking, tactical considerations which might explain such a course of action being adopted. Those considerations press this case even closer to the end of the spectrum identified by O'Donnell J. in Lough Swilly at which a court should refuse any attempt to reformulate the claim on appeal. 7.6 It also seems to me that counsel for the defendants was correct when he characterised the claim advanced in the High Court by Koger as one in which the breach of copyright claim and the breach of confidence claim ran in tandem, with no distinction made between them other than the obvious distinction that they are separate causes of action. As already analysed there can be real differences between the circumstances in which both types of claims might succeed. However, Koger chose not to make any case based on such differences but rather sought to make the case under both headings on the same substantive basis. To allow, at this late stage, Koger to have the opportunity to go back to the High Court to argue a case which could only emphasise the differences between a breach of copyright claim and a breach of confidence claim would, in my view, also meet the category of a "diametrically opposed" ground of appeal (i.e. diametrically opposed to the case made in the High Court) also identified in Lough Swilly. 7.7 There are very real reasons both of principle and of practice why, not least in complex cases, parties should be required to carefully consider whatever case they wish to put forward to their best advantage and stick to it. Trials are not a dry run. Tactical decisions are made by all parties on a regular basis in the context of complex trials. Doubtless, with the benefit of hindsight, many parties might wish to be allowed revisit some of the tactical decisions which they took. However, allowing parties do so on appeal is a recipe both for procedural chaos and serious injustice. 7.8 For whatever reason, Koger made the case it did before the High Court. It must now be kept to that case. None of the grounds of appeal sought to be relied on were, in my view, argued before the High Court in any meaningful way such as would justify this Court, even if those grounds were considered to be meritorious, in setting aside the judgment of the trial judge. Each of those grounds could only succeed if this Court were to permit what is essentially a new case to be made on appeal. For the reasons already analysed, I am satisfied that permitting Koger so to do would be to run the risk of grave injustice. I would not, therefore, permit a new case to be made on appeal in the circumstances of these proceedings. That being so, it does not seem to me that any of the grounds of appeal can properly be advanced. 7.9 Without allowing Koger to run what I am satisfied would be a significantly different case on appeal, none of the grounds advanced really get to first base. In order that an evidential burden of proof can be said to have shifted and in order, therefore, that there be any burden on a defendant to explain similarities by reference to such matters as publicly available or third party materials or functional necessity, the plaintiff must put sufficient evidence before the Court of similarity and opportunity. Having, for whatever reason, confined its case on opportunity to the availability of an actual copy and that case having failed on the facts (and not being the subject of an appeal), it follows that all of the grounds can only be relevant to the appeal if Koger were to be permitted to now rely on copying from memory. For the reasons already analysed, I am not satisfied that Koger should be permitted to adopt that course of action. It follows, therefore, that Koger's appeal must fail. 8. Conclusions 8.2 For those reasons, I would dismiss the appeal and affirm the order of the trial judge.
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