Is this a copy? John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions Ltd

In John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions Ltd[2014] EWHC 3779 (IPEC) (21 Nov 2014) Judge Hacon had to decide whether the fabric used to make the dress in the bottom photo was a copy of the fabric in the top one.

The Facts
Some time before the beginning of Aug 2012 Lee Ann Fashions Ltd. ("Lee Ann") received the following design brief from Marks & Spencer:
"Print Direction 
More primitive wood blocking prints, bold batiks, multi-stripes and tribal prints. Often these are anchored with stone and Black with highlights of the colour pops of the collection"

On 2 Aug 2012 employees from Lee Ann met a sales executive of John Kaldor Fabricmaker UK Ltd ("Kaldor"). Lee Ann invited Kaldor to supply samples of its materials so that Kaldor could bid for Marks & Spencer's order.

Kaldor supplied 22 samples including 4 metres of the fabric in Annex 1. Lee Ann offered to supply Marks & Spencer dresses made from that fabric. The offer was accepted and Lee Ann won Marks's contract to supply it with tribal print dresses for its "Per Una" range.

Lee Ann asked Kaldor to quote for supplying the fabric on 25 Sept. For some reason or other, Lee Ann decided not to order from Kaldor and instructed one of its own designers called Rachel Vance ("Mrs Vance") to design a fabric which would satisfy Marks & Spencer's design brief.

The judge explained what happened at paragraph [36] of his judgment:
"Mrs Vance had earlier created tribal prints which were collected in her computer archive. She selected one of these as her starting point. It was referred to as 'the Earlier Design'. It contained a number shapes in juxtaposition to create an African 'tribal' look. Mrs Vance selected the triangles, chevrons and 'bow tie and dot' shapes. Two triangles were merged to create a fourth, diamond shape. Using Photoshop the four individual shapes were distorted to make them more individual. 'Swatch tiles' of each of the four shapes were created and juxtaposed. The tiles were distorted and stretched to alter the design. A 'repeat tile' was then created which formed the basic unit which is repeated to create the design. Finally colours were added using computer brushstrokes. The design was given the number RAS-790 and six colour versions were identified as RAS-790A to F. Images of these were sent to Mark & Spencer. They selected RAS-790C, which was the design to which the fabric alleged to infringe was later made. All this was done on 27 September 2012."
The Claim
Kaldor sued Lee Ann for infringement of copyright and unregistered Community design right.  By the time the action came to trial it was common ground that the fabric in Annex 1 was an original artistic work in which copyright subsists pursuant to s. 1 (1) (a) of the Copyright Designs and Patents Act 1988 ("CDPA") and that the design of that fabric was also an "unregistered Community design" within the meaning of art 1 (2) (a) of the Community Design Regulation (Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ EC No L 3 of 5.1.2002, p. 1)).

Copyright
At paragraph [10] of his judgment His Honour directed himself as follows:
"Primary infringement of copyright pursuant to section 16 of the Copyright, Designs and Patents Act 1988 requires the claimant to establish that (1) the alleged infringing article was copied, directly or indirectly, from the copyright work and (2) the act of copying was done in relation to the work as a whole or any substantial part of it."
In most cases claimants have to point to similarities between the copyright work and the alleged copy and also to the defendant's access to the original to raise a presumption of copying. It is then up to a defendant to rebut that presumption by explaining away the similarities or showing that the alleged copy was created independently.

Referring to Stoddard International plc v William Lomas Carpets Ltd [2001] FSR 44, Designer Guild Limited v. Russell Williams (Textiles) Limited (Trading As Washington Dc)  [2000] UKHL 58, [2000] WLR 2416, [2001] 1 All ER 700, [2001] ECDR 10, [2001] FSR 11, [2001] FSR 113, [2000] 1 WLR 2416 (23 Nov 2000) and C-5/08 Infopaq International A/S v Danske Dagblades Forening  ECLI:EU:C:2009:465, [2009] ECDR 16, [2010] FSR 20, [2009] ECR I-6569, EU:C:2009:465, [2012] Bus LR 102, [2009] EUECJ C-5/08 (16 July 2009) Judge Hacon discerned the following guidance:
"(1) The first stage is to consider whether the claimant has established a prima facie inference of direct or indirect copying by reason of the similarities between the copyright work and the defendant's work.
(2) Similarities which constitute the expression of ideas that have no connection with the literary, dramatic, musical or artistic nature of the work are to be disregarded.
(3) Similarities not thus excluded but which are shown to be commonplace give rise to little or no inference of copying; the nearer a similarity approaches the strikingly original end of the spectrum, the greater weight it carries in supporting an inference of copying.
(4) If the claimant establishes a prima facie case of inferred copying, this may be rebutted by the defendant's evidence of independent design. The stronger the prima facie case, the more cogent the defendant's evidence must be to rebut the inference.
(5) If there is no finding of copying, there is no infringement. If there is a finding of fact that there has been copying, the next stage is to consider whether copying was done either in relation to the copyright work as a whole or any substantial part of it.
(6) Designers Guild sanctions two alternative approaches to the question of substantial part. They are alternatives because neither was expressly endorsed by a majority. The first is to disregard the defendant's work and to assess whether the similarities from which an inference of copying was drawn constitute a substantial part of the copyright work. This is a qualitative, not a quantitative assessment. The second, which applies only in an instance of altered copying, is to determine whether the infringer has incorporated a substantial part of the intellectual creation of the author of the work. In many cases the difference between the two approaches to an allegation of altered copying may be limited.
(7) To the extent that it has not already been excluded under step (3), a commonplace similarity can in any event make no contribution to any substantial part of the copyright work alleged to have been copied since it is not capable of attracting copyright protection.
(8) Assessment of whether there has been copying of a substantial part of the copyright work is a necessary and distinct step in the determination of whether the defendant has infringed. However, where copying has been established, on the facts it may be that this will almost inevitably lead to the conclusion that a substantial part of the copyright work has been copied. This may be influenced by the degree to which the finding of copying depended on the similarities between the two works."
Unregistered Community Design
Art 19 (2) of the Community Design Regulation confers on the holder of an unregistered Community design the same right to prevent "the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes "provided that the contested use results from copying the protected design." The article also provides that
"The contested use shall not be deemed to result from copying the protected design if it results from an independent work of creation by a designer who may be reasonably thought not to be familiar with the design made available to the public by the holder."
As the parties had agreed that an unregistered Community design subsisted in the design in Annex 1 and that the fabric used to make the dress in Annex 2 did not produce a different overall impression on the informed user (in this case "a person with a keen fashion sense and a good knowledge of the design of prints for women's fashion wear including tops, skirts and dresses") the only issue was whether the fabric in Annex 2 was the result of copying.

The Similarities
Kaldor alleged the following similarities between Annex 2 and Annex 1 in its particulars of claim:
"(a) the lines, patterns, contours, colours, shapes and dimensions (including relative dimensions) of the repeated small diamond block shapes;
(b) the lines, patterns, contours, colours, shapes and dimensions (including relative dimensions) of the repeated small triangle block shapes;
(c) the lines, patterns, contours, colours, shapes of the background pattern of the design being a mix of contrasting colours which appear to be "feathered" onto the fabric;
(d) the predominant use of four colours in the background pattern;
(e) the repeated use of diamond shapes in larger areas and triangles in smaller and fill-in areas on sections of the pattern;
(f) the repeated use of patched and spliced sections of the pattern in chunks on the fabric, interlocking with different repeated pattern sections at different angles, to build a multi-directional repeated pattern."
In comparing the designs Judge Hacon took into account the "design corpus" - that is to say, both sides' set of 10 designs to represent the design corpus - even though the design corpus is strictly relevant only to issues regarding Community design. He did so because he believed that they should be considered also in this context in order to give him some objective idea of where design features fall on the spectrum between commonplace and strikingly original. After considering the two designs, the corpus and the pleaded list of similarities the learned judge concluded that there was "a prima facie possibility of copying", but the possibility was "neither strong nor negligible".

The Rebuttal
Kaldor argued that the similarities between the fabrics resulted either from "conscious copying", "sub-conscious copying" or "indirect copying". There were discrepancies in Mrs Vance's evidence but she acknowledged those and corrected them. After observing her in the witness box the judge concluded at paragraph [48] that there has been no copying:
"The arguments advanced on behalf of John Kaldor are not in my view collectively enough for me to reject the clear evidence given by Mrs Vance that she created the design of the LA Fabric independently of the conscious influence of the JK Fabric. With regard to indirect copying, Mrs Vance said that she could not remember the precise words of instruction she was given by Ms Cook or the other individual at Lee Ann which led to her creation of the LA Fabric. She also said that she was given a general design brief, including the requirement of a tribal look, as opposed to specific instructions, by way of the starting point for her design process. She said that she came up with the design herself. I have no good and sufficient reason to reject that evidence. Finally there is Lee Ann's allegation of unconscious copying. That argument could only be sustained by a strong inference of copying from similarities between the two designs. As I have already stated, I do not find those similarities sufficiently compelling from which to infer a strong inference of copying."
In the absence of copying the claims for both infringement of copyright and infringement of unregistered Community design failed.

Comment
This case raises a number of interesting points and lessons.

The first is that Kaldor would have won had it registered its fabric design as a registered design in the UK under the Registered Designs Act 1949 or as a registered Community resign for the while EU under the Community Design Regulation as there was no dispute that the fabric used to make the dress in Annex 2 did not produce a different overall impression on the informed user as the fabric in Annex 1. Since there is no examination for design or Community design registration in either the Intellectual Property Office or the Office for Harmonization in the Internal Market design registration is a relatively cheap and easy exercise.

The second point is that the parties focused on essentials. At paragraph [7] the judge said:
"The parties are to be commended in taking a realistic view of which issues were really at stake. There was some judicial pressure exerted at the case management conference regarding subsistence and ownership of copyright but even allowing for that, the parties' conduct of these proceedings was both efficient and in my view rational."
At paragraph [8] he added:
"Without identifying particular proceedings, I should also record that in the IPEC what some regard as a traditional approach to litigation, that is to say taking every conceivable point on the chance that something might gain traction, is never appropriate."
All I would venture to add is that as it is now part of the overriding objective in CPR 1.1 (1) to deal with cases at "proportionate cost" His Honour's remarks could apply to all civil litigation and not just to proceedings in the Intellectual Property Enterprise Court.

Thirdly, neither party nor the judge raised the red bus case (Temple Island Collections Ltd v New English Teas Ltd and another [2012] EWPCC 1 (12 Jan 2012) which I discussed in "Copyright in Photographs: Temple Island Collections and Creation Records" 15 Jan 2012) even though Mrs Vance used Photoshop to create her designs just as the defendant did with its photo of the red bus in Temple Island. As the defendant's photo was taken independently of the claimant's it must have been the manipulation with Photoshop to enhance similarities that made the difference. It is not clear why that point was not discussed but my guess is that it is because of a consensus among intellectual property lawyers that Temple Island stands on its own very special facts.

Further Information
In the run up to Christmas there is a great temptation to copy in the fashion, toy and novelties trade and hence a lot of cases like John Kaldor. At one time the motions court (the old name for the Chancery interim applications court) was chockablok with applications for interim injunctions against market traders and discount stores for offloading lookalikes and knockoffs of the latest fashion item or craze. Rising litigation costs and the risk of having to pay the successful party's costs if the application is unsuccessful has cooled designers' ardour for this sort of relief but not extinguished it altogether. As an injunction is the relief that a designer really needs the small claims track of IPEC provides a cheap and relatively risk free means of getting one. If anyone wants to discuss this case or copyright or registered or unregistered Community design right infringement in general he or she can call me on 020 7404 5252 during office hours or use my contact form.

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