Thelma Madine, the designer of extravagant wedding dresses for the traveller community made famous by the TV show My Big Fat Gypsy Wedding, has won a design right claim against an ex-employee who was found to be dealing in an infringing wedding dress and figurine.
Two of Ms Madeline’s employees, the daughter and mother Leanne and Pauline Phillips, assisted her with meeting customers, discussing wedding dress designs with them and sketching out the designs. Whilst employed by Ms Madine, they were involved in designing a dress for a bride called Delilah - featuring an unusual “fan” look using pleated fabric arranged in a series of fan shapes over the skirt of the dress (the “Fan Dress” - above). They were then also involved in designing another dress for a bride called Chenise, which was based on the Fan Dress but with diamanté decorations added on the bodice (the “Chenise Dress”).
After Chenise’s wedding was postponed, Leanne and Pauline Phillips fell out with Ms Madine and brought constructive and unfair dismissal proceedings against her. Leanne Phillips launched a competing wedding dress business, with her mother acting as her “general assistant”. Once Chenise’s wedding was back on, she approached Leanne Phillips, instead of Ms Madine, to complete and make her dress (the “Defendant’s Dress” – above). Leanne Phillips then also entered into an agreement with a producer of china figurines collected by travellers to produce a figurine wearing a dress based on Chenise’s dress (the “Figurine Dress” – above).
Ms Madine claimed the Defendant’s Dress and the Figurine Dress infringed her unregistered UK design right in the Fan Dress. The case was brought in the Intellectual Property Enterprise Court (IPEC) before Amanda Michaels. She found against Leanne Phillips - but not her mother, Pauline Phillips - on the following grounds in particular:
- On 1 October 2014, section 213 of the Copyright, Patents and Designs Act 1998 was amended by the Intellectual Property Act 2014 to delete the words “any aspect of” from the definition of an unregistered UK design – i.e. “the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article”. That amendment had subsequently been held to prevent claims in respect of “disembodied features, arbitrarily selected, which are not, in design terms, parts of the design.” However, the Court in this case held that the designs in issue consisted of the whole or a part of the designs - not “disembodied features” - and they were therefore unaffected by the amendment.
Subsistence and ownership
- The Court had to consider the subsistence and ownership of Ms Madine’s design right in the skirt portion of the Fan Dress (before the addition of the diamanté bodice), and in the Chenise Dress (i.e. the Fan Dress plus the bodice).
- In order to be protected by unregistered UK design right, a design must be “original”. This is not simply a question of whether it is “commonplace”. Originality is tested in the same way as for copyright infringement. Proving originality is not very onerous, whether set by reference to the UK test of not being a slavish copy, or the EU copyright requirement for a work to comprise “the expression of the author’s own intellectual creation”. Design right may subsist in a design parts of which have been copied from an earlier design, provided “sufficient skill, effort and aesthetic judgment” has been expended on the new design to make it original compared to the old one.
- By the end of the trial, the defendants had abandoned their denial of the originality of the Fan Design and conceded that design right subsisted in it – including the shape/silhouette of the skirt, the shape and relative size of the individual fans, the number, positioning and arrangement of the fans of the skirt, the shape of the portion immediately above the hem, the swags over the hips and the shape of the peplum. No issue was taken as to ownership, since the design was made by Ms Madine and/or Leanne Phillips, her employee at the time.
- The defendants argued that the changes made to the Fan Dress - i.e. the design of the bodice - were insufficient for a new design right to have arisen in the Chenise Dress. However, the Court found the changes were of some significance, because the overall look of the bodice was quite different to that of the Fan Dress. In particular, pleated fan features at the sides and front were replaced with a group of upright strips of material. Accordingly, there was also design right in the Chenise Dress or at least in the bodice element of that design. That right also belonged to Ms Madine, as Pauline Phillips had made the design in her capacity as her employee.
- In order to establish infringement of unregistered UK design right, a claimant must show that its design was copied by the defendant to produce articles made exactly or substantially to the claimant’s design. The right is not infringed by someone who creates an article independently - there must have been copying, although copying may be direct or indirect. Indirect copying may arise where verbal instructions are given which afford a sufficient causal link to the earlier design. Generally, where there is substantial similarity, this will be seen as prima facie evidence of copying, particularly when coupled with proof of access to the earlier design.
- The Court found that the Defendant’s Dress included the most significant features of the Fan Dress and Chenise Dress designs – namely, the shape/silhouette of the skirt, the shape and relative size of the fans, the number, positioning and arrangement of the fans of the skirt, the swags over the hips, the peplum and the bodice. The fact that the peplum of the Fan Dress had more “waves” than the peplum of the Defendant’s Dress was not a significant difference. Accordingly, there were substantial similarities between the Fan Dress and Chenise Dress designs and the Defendant’s Dress design and these were substantial enough to raise an inference of copying. Leanne Phillips had been intimately involved in the design of the Fan Dress and Chenise Dress and indeed Chenise had come to Ms Madine, and then to Leanne Phillips, seeking a version of the Fan Dress. The Court found that the similarities between the two designs arose from copying, which in the circumstances must have been deliberate, even if Leanne Phillips might have preferred (as she claimed) to produce a wholly original design.
- Leanne Phillips had admitted that she had given photographs of the Defendant’s Dress to the figurine producer and that the Figurine Dress had been copied from the Defendant’s Dress as a figurine version. It was therefore held to be an indirect copy of the claimant’s designs.
Liability of Pauline Phillips
- Mere (even knowing) assistance or facilitation of a primary infringement is generally not enough to establish joint liability. A joint tortfeasor must have induced, incited or persuaded the primary infringer to engage in the infringing act or there must be a common design to commit the infringing act.
- Ms Madine alleged that Pauline Phillips was primarily liable for infringement – jointly with her daughter Leanne - because she had taken copies of the sketches from the premises with a view to enabling Leanne to make the dress for Chenise and that she had also encouraged Chenise to get the dress from Leanne. However the Court held those allegations had not been proved.
- Further, although there was some evidence that Pauline Phillips had been working for her daughter at the relevant time, her role was unclear, and she denied having been instrumental in the development of the Defendant’s Dress. Accordingly, the Court found there was no evidence of a “common design”, and the claimant had not proved she was jointly liable with her daughter for making the infringing dress.
Liability for figurines
- Leanne Phillips denied liability for having authorised the primary infringement of making the figurines – alleging she had merely enabled the figurine producer to make them. Under the 1998 Act, design right is infringed by a person who “authorises” another to make articles to a design without the licence of the design right owner. Authorisation has been held to mean the grant or purported grant of the right to do the act complained of but it does not include mere enablement, assistance or even encouragement of the infringement.
- The Court held this was not a case of mere enablement of infringement. Leanne Phillips had not only provided photographs of the Defendant’s Dress to the figurine producer specifically to make figurines which would embody copies of the dress but under their contract she had the right to exercise some control (even if not the final control) over their design. The figurine producer had undertaken to consult her, take her opinions into account, and “respect her designs and endeavour to produce them faithfully as much as the constraints of ceramic manufacture allow”. The manufacture of the infringing figurines had therefore been authorised by Leanne Phillips, and she was liable for primary infringement. Since she had admitted offering the figurines for sale, when she knew or had reason to believe they were infringing copies of the claimant’s designs, she was also liable for secondary infringement.
Case Ref:  EWHC 3268