Ashley Wilde Group Ltd v BCPL Ltd
| Jurisdiction | England & Wales |
| Judge | Melissa Clarke |
| Judgment Date | 21 November 2019 |
| Neutral Citation | [2019] EWHC 3166 (IPEC) |
| Date | 21 November 2019 |
| Docket Number | Claim No: IP-2017-000238 |
| Court | Intellectual Property Enterprise Court |
[2019] EWHC 3166 (IPEC)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
BUSINESS AND PROPERTY COURTS
INTELLECTUAL PROPERTY ENTERPRISE COURT
Rolls Building
New Fetter Lane
London
HER HONOUR JUDGE Melissa Clarke
sitting as a Judge of the High Court
Claim No: IP-2017-000238
Mr Michael Smith (instructed by Taylors Solicitors LLP) for the Claimant
Ms Anna Edwards-Stuart (instructed by Joelson JD LLP) for the Defendant
Trial dates: 9 and 10 October 2019
Approved Judgment
INTRODUCTION
This is a copyright dispute relating to two celebrity bedding ranges. The celebrities in question are Kylie Minogue, the iconic Australian singer, and Caprice Bourret, the highly successful model and reality television star. The Claimant (“ Ashley Wilde”) manufactures and sells, inter alia, duvet covers for the ‘Kylie Minogue At Home’ brand (“ KMAH”). The Defendant (“ BCPL”) manufactures and sells, inter alia, duvet covers and bed runners for the ‘By Caprice Home’ brand (“ BCH”).
It is now accepted by BCPL that Ashley Wilde is the first owner of the copyright in an original artistic work, namely a prototype fabric for use in a KMAH bedlinen range (the “ Evangeline Design”), which was created by its employee Laura Spencer in early July 2012 in the course of her employment. There is no dispute that Laura Spencer was a UK citizen and resident at the relevant time and so is a qualifying person for the purposes of section 154 Copyright Designs and Patents Act 1988 (“ CDPA”).
Fig. 1 The Evangeline Design
Ashley Wilde's case is that it used the Evangeline Design to manufacture, inter alia, a duvet cover in a KMAH range of bedlinens which was marketed in the UK under the name ‘Evangeline’ (“ Evangeline Duvet Cover”). It is not disputed that Ashley Wilde sold this range in the UK through a number of online and ‘bricks and mortar’ retail channels in at least 2014 and 2015.
It is not disputed that from around April 2017 BCPL manufactured and sold in the UK a duvet cover and matching bed runner called “Amore”, as part of a range of BCH bedlinens marketed under that name (the “ Amore Products”). BCPL says the Amore Products were designed by a freelance designer named Fiona Graham, on BCPL's behalf, working with Tansy Wilson of the Chinese manufacturer Beijing Shanghai Textiles (“BST”), and were approved for production by Ms Bourret.
Fig 2. The Evangeline Duvet Cover (above) and the Amore duvet cover (below)
THE PARTIES' CASES
Ashley Wilde alleges that the Amore Products are indirect copies of the Evangeline Design, because each reproduces the whole or a substantial part of the Evangeline Design by copying the Evangeline Duvet Cover. In the Amended Particulars of Claim (paragraph 7) it identifies the following similarities:
i) The choice of using a repeating pattern of scallop-style pleats in repeating horizontal rows;
ii) The relative size of each scallop-style pleat;
iii) The relative spacing between each scallop-style pleat;
iv) The relative spacing between each horizontal row of scallop-style pleats.
Ashley Wilde alleges that the Evangeline Duvet Cover was widely available in the UK and that BCPL or its designer had access to it and copied it. It pleads that by authorising the design and/or production of the Amore Products, putting them on the market within the EEA, and importing, stocking and selling them in the course of a business, BCPL has infringed Ashley Wilde's copyright in the Evangeline Design.
Ashley Wilde seeks an injunction to restrain BCPL from infringing its copyright; recall of the Amore Products from channels of commerce, delivery up of infringing articles, disclosure of BCPL's sources of supply. an inquiry as to damages or alternatively an account of profits, publication of this judgment, and costs.
BCPL avers that the Amore Products were independently designed and are not infringing copies of the Evangeline Design. It admits that it authorised the production of the Amore Products, imported them into the United Kingdom and has possessed, sold, offered for sale and distributed the Amore Products in the course of its business. However it denies that it or its freelance designer of the Amore Products, Ms Fiona Graham;
i) purchased or otherwise accessed the Evangeline Duvet Cover before the design of the Amore Products;
ii) copied the Evangeline Duvet Cover;
iii) directly or indirectly copied all or a substantial part of the Evangeline Design; or
iv) issued any copies of the Evangeline Design to the public or had any other dealings with the Evangeline Design.
In addition BCPL denies that any similarities between the Amore Products and the Evangeline Duvet cover are relevant for the purposes of assessing copyright infringement of the Evangeline Design, as the Evangeline Duvet cover is not a faithful reproduction of the Evangeline Design. The proper comparison, it avers, is between the Amore Products and the Evangeline Design, and it sets out differences between the those at paragraph 9(c) and 9(cA) of the Amended Defence. I will come back to this.
THE ISSUES
HHJ Hacon identified a list of issues for determination at trial, at the Case Management Conference:
i) Whether copyright subsists in the copyright work. This is now accepted by BCPL so is no longer in issue;
ii) Whether BCPL's designer Fiona Graham copied the copyright work;
iii) If so, whether BCPL authorised that copying;
iv) Whether the Amore Products are infringing copies of the copyright work;
v) If so, whether BCPL knew or had reason to believe that the Amore Products are infringing copies of the copyright work;
vi) Whether, given the findings on issues (ii)-(v) above, in the circumstances set out in paragraph 9 of the Particulars of Claim and paragraph 17 of the Defence, BCPL has infringed Ashley Wilde's copyright;
vii) Whether any infringement found was flagrant or caused prejudice to Ashley Wilde.
THE LAW
Copyright
Section 16(1) CDPA provides that the owner of the copyright in an artistic work has the exclusive right to do certain acts restricted by the copyright which include, inter alia, copying it and issuing copies of the work to the public. Copyright in a work is infringed by a person who does, or authorises another to do, any of the acts restricted by the copyright without the license or consent of the copyright owner ( section 16(2) CDPA): (a) in relation to the work as or any substantial part of it; and (b) directly or indirectly ( section 16(3) CDPA).
The first step, therefore, is to establish whether there was direct or indirect copying, and the second step is to consider whether that copying was in relation to the whole of the copyright work or any part of it.
In this case there is no suggestion that BCPL or anyone involved in the design process of the Amore Products can have directly copied the Evangeline Design, and so the first step is for the court to determine whether there was indirect copying of the Evangeline Duvet Cover. If there was not, that is the end of the matter. It is only if the court finds that there was indirect copying that it will go onto the second step which, in the circumstances of this case, is to consider whether that copying was in relation to the whole or any substantial part of the Evangeline Design, not the Evangeline Duvet Cover. That is because the Evangeline Design is the copyright work which has allegedly been infringed, and there is no dispute that the Evangeline Duvet Cover is not an exact replica of the Evangeline Design.
Whether what has been copied amounts to a substantial part of a copyright work is a matter of quality rather than quantity ( Ladbroke (Football) Ltd. v William Hill (Football) Ltd. [1964] 1 WLR 273). A part is substantial if it contains elements of the expression of the intellectual creation of the author of the copyright work ( Infopaq Internas A/S v Danske Dagblades Forening [2009] ECR-I 6569). Infopaq is applicable because section 16 CDPA must be construed so far as possible in conformity with articles 2 and 3(s) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, as helpfully explained by Arnold J in England & Wales Cricket Board v Tixdaq [2016] EWHC 575 (Ch) at [65].
Accordingly, what matters is whether the part taken contains elements which express the intellectual creation of the author. If it does, then it is a substantial part. If it does not, it is not.
Ms Edwards-Stuart submits that I should reverse these steps, and establish whether the Amore Products reproduce the whole or a substantial part of the Evangeline Design first, before going on to consider whether the reproduction of the substantial part of the Evangeline Design is the result of copying. However I consider that it is necessary to identify the part taken by copying first, before it is possible to assess whether that part taken is a substantial part of the copyright work.
When assessing what if anything has been taken, a prima facie case of copying will arise if there is substantial similarity between the copyright work and the allegedly infringing copy, and proof of access to the copyright work (or the intermediate work in indirect copying) by the alleged infringers, per Designers Guild v Russell Williams Textiles [2000] UKHL 58, [2001] 1 All ER 700, [2000] 1 WLR 2416, at 2425. Lord Millet expressed the court's task as follows:
“The first step in an action for infringement of artistic copyright is to identify those features of the defendant's design which the plaintiff alleges have been copied from the copyright work. The court undertakes a visual comparison of the two designs, noting the similarities and the differences. The...
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