UK copyright and unregistered Community design rights in a fabric design held not infringed, despite design similarities and Defendant’s access to Claimant’s fabric.
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In the summer of 2012, Marks & Spencer (one of the UK’s largest retailers) asked the Defendant (Lee Ann) to create a print to meet a design brief. In August 2012, the Claimant (John Kaldor) provided Lee Ann with a number of prints to meet this design brief, including the print in issue (the “JK Fabric”).
Marks & Spencer liked the JK Fabric, and on 25 September 2012, Lee Ann asked John Kaldor to provide a costing for the JK Fabric. On 27 September 2012 (two days after Lee Ann had asked John Kaldor to price the JK Fabric), Lee Ann instructed one of its own designers to create a design to meet Marks & Spencer’s brief. In the end, the design created by Lee Ann (the “LA Fabric”) was chosen by Marks & Spencer and the JK Fabric design was discarded.
In February 2013, John Kaldor became aware of a dress sold by Marks & Spencer which was made from the LA Fabric.
John Kaldor alleged that Lee Ann amended the JK Fabric design to create the LA Fabric, thereby infringing its copyright and design rights in the JK Fabric. Lee Ann denied copying, claiming that it had come to the LA Fabric design independently of the JK Fabric.
The parties agreed that if copying of a substantial part was made out for copyright, then infringement of Community design right would follow. So, before addressing the case in hand, Judge Hacon of the SME friendly Intellectual Property and Enterprise Court (“IPEC”) helpfully distilled the principles laid down by the UK’s highest court in Designers Guild in relation to establishing copyright infringement as follows:
- Consider whether there is a prima facie inference of copying by reason of similarities between the works.
- Similarities which are expressions of ideas that have no connection with the artistic nature of the work (e.g. an invention which a copyright work describes) should be disregarded.
- Similarities which are commonplace will give rise to little or no inference of copying, whereas strikingly original similarities will carry a greater weight in supporting an inference of copying.
- A prima facie case of inferred copying may be rebutted by evidence of independent design. The stronger the case of copying, the more cogent the Defendant’s evidence of independent design must be.
- If there is no finding of copying, there is no infringement. If there is copying, the next stage is to consider whether the copying was done in relation to the whole or a substantial part of the earlier work.
- Designers Guild sanctions two alternative approaches to the question of “substantial part”:
- The first, which can be acquired to all cases, requires an analysis of how much (from a qualitative perspective) of the earlier design has been taken, without reference to the Defendant’s work; or
- The second, which applies to cases of altered copying only, requires an analysis of how much of the author’s intellectual creation has been incorporated into the Defendant’s work, with reference to that work.
- A commonplace similarity is not capable of attracting copyright protection, and cannot make any contribution to the “substantial part”.
- Where copying has been established on the basis of a high degree of similarities between the works, this may well lead to an inevitable conclusion that a substantial part of the work has been copied.
The first issue to be decided was whether the JK Fabric had been copied. This issue was common to establishing infringement of both the copyright and the design rights in the JK Fabric. John Kaldor suggested that the JK Fabric could have been copied consciously, unconsciously, or indirectly.
On the basis of the similarities between the JK and LA Fabrics, and taking into consideration the prior designs relied on by both parties, Judge Hacon held that there was “a prima facie possibility that there was copying, but that the possibility [was] neither strong nor neglibible”.
As a prima facie inference of copying had been made out, it was for Lee Ann to rebut this inference. On the basis that the prima facie inference in this case was “neither strong nor negligible”, Judge Hacon did not consider “the Defendant had a mountain to climb” in seeking to rebut the inference.
In relation to conscious copying, despite the fact that Lee Ann’s designer may have had access to the JK Fabric, Judge Hacon found her evidence of independent design to be credible. This was because she was able to recount how she had created the LA Fabric design and had design records to support her story, and none of the evidence put forward by John Kaldor was sufficient to cause him to disbelieve her evidence.
Regarding unconscious copying, Judge Hacon considered that this “argument could only be sustained by a strong inference of copying from similarities between the two designs”, and in this case the similarities were not “sufficiently compelling”.
In relation to indirect copying, Judge Hacon was unwilling to draw any adverse inferences from the absence of key witnesses concerning the precise nature of the design brief given to Lee Ann’s designer (emphasising that witnesses in IPEC cases should be kept to a minimum). To the contrary, he held that her evidence that she received only a general design brief was compelling.
On the basis that the JK Fabric design had not been copied, there could neither be infringement of the copyright nor of the unregistered Community design rights in the JK Fabric, and the claims were dismissed.
The key message to take from this judgment is that a finding of similarity between two designs and the fact that a defendant had access to the original design will not necessarily result in an inference of copying. The same also applies in relation to other works.
The judgment also highlights the importance of keeping records of each step of the design process.