What's it about?

Mei Fields ("MF") designed greeting cards and commercialised those designs through her businesses, Mei Fields Designs Limited and Metropolis. Following various business dealings between MF and Saffron Cards and Gifts Limited (Saffron), MF discovered that Saffron was selling greetings cards which, according to MF, copied her designs. MF commenced proceedings for copyright infringement against Saffron and Mr Steele who, as sole director and shareholder of Saffron, was alleged to be jointly and severally liable. In attempting to defeat the claims, the defendants raised a number of arguments, with the IPEC judge describing their case as being 'like a stack of matryoshka dolls. Each defence contained another, which contained another'. Crucially, the cards bearing MF's designs also carried the words 'Designed by Mei Fields'. Under section 104 of the Copyright, Designs and Patents Act 1988 there is a rebuttable presumption that if a name claiming to be that of the author appears on published copies of a work, then that person is presumed to be the author.

Why does it matter?

The defendants argued that the relevant designs were not owned by MF for a number of reasons, including that they had been created in the course of her employment (meaning that her employer would have owned them) and also that she owned the designs jointly with some of the junior designers at the company that produced the cards (who had the technical skills to digitise the designs from her sketches). Ultimately, the court was unconvinced by the defendants' arguments, and the defendants were unable to displace the presumption that, as her name appeared as the author on the cards, MF was the copyright owner. As to whether the defendants had copied MF's designs, on a side-by-side comparison, the court found copyright infringement in only two out the 13 designs. Mr Steele was found to be jointly liable; as the sole director, he had been instrumental in the decision to sell cards using MF's designs. In any case, Saffron itself would have insufficient resources to satisfy a judgment.

Now what?

This case demonstrates the range of arguments available to a party against whom copyright infringement has been alleged. However, perhaps the biggest challenge faced by the defendants (which they failed to achieve) was to rebut the presumption that MF owned the designs by virtue of the fact that her name appeared as author on them.

Mei Fields Designs v Saffron Cards and Gifts and another [2018] 1332 (IPEC)