INTELLECTUAL PROPERTY ENTERPRISE COURT
Fetter Lane, London, EC4A 1NL
B e f o r e :
| JOHN KALDOR FABRICMAKER UK LIMITED
|- and -
|LEE ANN FASHIONS LIMITED
Ben Longstaff (instructed by Spearing Waite) for the Defendant
Hearing dates: 9th October 2014
Crown Copyright ©
Judge Hacon :
Points no longer in issue
CPR 63 PD 29.2(2)
The issues by the time of trial
(1) Whether Mrs Vance copied the design of the JK Fabric in creating her design for the LA Fabric.
(2) If so,(a) in relation to copyright, whether Mrs Vance copied a substantial part of the design of the JK Fabric; and(b) in relation to Community design, whether the design of the LA Fabric does not produce on the informed user a different overall impression to that of the JK Fabric.
"The closer the similarities between the work relied on and the alleged infringement, the more likely it is that the designer's evidence of independent design will be met with incredulity. The more work which the designer can show went into the alleged infringement, either on the basis of contemporaneous events or on the basis of the designs themselves, the more willing one may be to accept that he did not save himself effort by copying the claimant. So the designer who denies copying has to climb the mountain represented by the objective similarities between the copyright work and his own and the inferences which can be drawn from them, and will be disbelieved if he or she cannot satisfactorily explain the similarities."
Taken too literally, this passage might suggest that if there are objective similarities between the copyright work and the defendant's work, the defendant has a mountain to climb and will be met with degrees of incredulity from the court. Certainly that will not have been what Pumfrey J meant. The simple point is that the stronger the prima facie case of copying which can be inferred from the similarities, the more compelling the defendant's evidence of independent design must be to rebut that inference. Where a prima facie inference of copying can be made out but is weak, less of a rebuttal will be needed to avoid the conclusion that there was copying.
"Since the judge had based his finding of copying largely on the similarity between the two designs it would have been very surprising if he had found that [the defendant] had not copied a substantial part of [the claimant's] Ixia design, but it was necessary for the judge to consider that question, and he did. He found that there had been copying of a substantial part.
… While the finding of copying did not in theory conclude the issue of substantiality, on the facts here it was almost bound to do so."
Lord Millet put it this way (at ):
"… the issues of copying and substantiality are treated as separate questions. Where, however, it is alleged that some but not all the features of the copyright work have been taken, the answer to the first question will almost inevitably answer both, for if the similarities are sufficiently numerous or extensive to justify an inference of copying they are likely to be sufficiently substantial to satisfy this requirement also".
(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 right
Prima facie inference of copying
"(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."
Chronology of events
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"
The key events of 27 September 2012
(1) Conscious copying
Mrs Vance knowingly copied the JK Fabric, either from a sample of it or from a dress made from the fabric.
(2) Subconscious copying
Mrs Vance had seen the JK Fabric at Lee Ann's premises, either as a sample or made into a dress and subconsciously copied it when she was designing the LA Fabric.
(3) Indirect copying
Mrs Vance never saw the JK Fabric but the instructions she was given by Ms Cook on 27 September were sufficiently detailed to amount to an oral description of the JK Fabric and thus a substantial part of the design of that fabric became incorporated into the design of the LA Fabric.
The evidence of independent design
Access to the JK fabric
The first colourway created by Mrs Vance
Phone call between Ms Haykiran and Ms Price
No evidence from Ms Price, Ms Cook or the designer
Errors in Mrs Vance's evidence
Conclusion on independent design
Substantial part and overall impression