Copyright: infringement of artistic works and fixation

By Audrey Horton

10-2019

Summary

The High Court has held that copyright in two artistic works, including a design debossed in foundation powder palettes and a design decorating the lid of a package containing makeup powders, was infringed by substantially similar designs.

Background

Copyright is a property right which subsists in original literary, dramatic, musical or artistic works (section 1(1)(a), Copyright Designs and Patents Act 1988) (CDPA).

Artistic work means graphic works, photographs, sculpture or collage, irrespective of artistic quality (section 4(1)(a), CDPA). A graphic work includes works such as drawings, diagrams, charts, plans, engravings, etchings and similar works (sections 4(2)(a) and (b), CDPA).

Originality for the purposes of establishing copyright requires the author's own intellectual creation (Infopaq International A/S v Danske Dagblades Forening [2010] FSR 20).

Copyright in literary, dramatic or musical works does not subsist until the work is recorded in writing or otherwise (section 3(2), CDPA). Artistic works are not explicitly required to be fixed in a tangible medium.

The facial makeup of the musician Adam Ant was held not protectable by copyright as it was not fixed in a tangible medium, and could be washed off (Merchandising Corporation of America Inc v Harpbond Ltd [1983] FSR 32). However, the design of a woollen plaid fabric was held to be protectable where the design was recorded in a weaving ticket which acted as a record of the visualized image of the fabric (Abraham Moon and Sons v Thornber [2012] EWPCC 37).

Facts

In 2013, a makeup brand, C, was launched and became commercially very successful. The interior and lid of foundation powder palettes sold by a supermarket, A, were debossed with designs substantially similar to those used by C in its palettes.

C sued A for copyright infringement and passing off.

A argued that the transitory nature of the designs, which were obliterated by use of the powder palette, meant that they were not sufficiently fixed to afford them copyright protection. A also argued that the designs were generic art deco-style patterns.

Decision

The court held in favour of C.

Copyright protection in the powder design was not affected or removed by the fact that it was ephemeral in nature. The fact that the design in the powders disappeared by being rubbed away by the user did not affect or remove the copyright protection to which such an artistic work is entitled, as long as it was set out as a visual record. Here, the work could be identified from the drawing and reproduced in the powder. The powder palettes were a three-dimensional reproduction of the two-dimensional object, namely the drawing.

The designs could be compared to copyright-protected sand sculptures that would be washed away by the tide. If the sculpture was not so protected, the artist would be unable to claim the copyright in a photograph of it. Similarly, a bespoke wedding cake that later was eaten could still constitute a copyright work, as could an ice sculpture that had melted. The court emphasised the unique position of copyright in an artistic work, in that it does not explicitly require permanence.

The main creators of the works had drawn inspiration from art deco. Although the elements, when considered individually, were generic, the works as a whole were original. Neither of the two designs had been slavishly copied from any prior designs and so they had the requisite originality and copyright protection subsisted in them.

C owned copyright in the two designs as, on the balance of probabilities, title had been validly transferred.

On the question of infringement, there were certain features that A's designs shared with C's designs that were not unoriginal or commonplace. The similarities relied on were sufficiently close, numerous or extensive to be more likely to be the result of copying rather than of coincidence. These similarities were qualitatively and quantitatively substantial. A had also admitted that all its designers were aware of C's designs when they were making A's designs. Copyright infringement was established.

A therefore had no real prospect of successfully defending the claim, and there was no compelling reason to withhold summary judgment.

Comment

Trade mark infringement, passing off and copyright infringement have all been used by famous brands to challenge lookalike products. Establishing misrepresentation for passing off is often difficult as consumers may not be confused about the source of a copycat product sold for substantially less than the original. This decision confirms that copyright infringement may be relied on to prevent the sale of lookalike products.

Notably, to obtain a speedy result, C made use of the summary judgment procedure and it was also heard under the Shorter Trials Scheme, with no damages or costs caps as would have applied in the Intellectual Property Enterprise Court. The decision is also a reminder that where necessary copyright in designs should be assigned at the time of creation rather than when needed for infringement proceedings.

Case: Islestarr Holdings Ltd v Aldi Stores Ltd [2019] EWHC 1473 (Ch).

First published in the October issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.