John Buckby, intellectual property solicitor at Spearing Waite, gives an insight into a fashion industry case handled by the firm concerning the alleged copying of tribal prints. John shares some useful tips on how to avoid liability for copyright infringement.
If you create a design that’s similar to someone else’s, and they accuse you of copyright infringement, you may need to prove exactly how you created your design. In a recent high profile court case, Spearing Waite successfully defended a fashion industry client sued for copyright and design right infringement.
John Kaldor Fabricmaker UK Limited v Lee Ann Fashions Limited
Spearing Waite’s IP specialists acted for the defendant in John Kaldor Fabricmaker UK Limited v Lee Ann Fashions Limited, a case recently decided in the Intellectual Property Enterprise Court (IPEC).
Spearing Waite successfully defended the allegation of copying, by incorporating good design record-keeping into a witness statement evidencing the designer’s independent creation of the works.
Background to the case
In September 2012, Lee Ann was given a brief by M&S for a range of ‘tribal print’ garments. The brief included a storyboard, a colour palette, and images of other designs to be used as inspiration.
Lee Ann created a fabric pattern in response to the requirement of the brief. John Kaldor had also provided fabric samples to Lee Ann earlier, in response to the same brief. In the end, M&S chose Lee Ann’s pattern, and incorporated it in a dress and other garments sold in early 2013 under the ‘Per Una’ brand.
When John Kaldor saw the Per Una garments on sale, they argued that the pattern was similar to one of the designs they had provided to Lee Ann for the M&S brief, and said Lee Ann must have copied it.
Lee Ann maintained from the outset that they had not copied John Kaldor’s design. They said their own in-house designer had created the pattern independently, and without even seeing John Kaldor’s fabric. This did not persuade John Kaldor, who stuck to their guns. Kaldor instructed London solicitors Mishcon de Reya to sue Lee Ann for copyright infringement and unregistered Community design right infringement. The case went all the way to trial in the Intellectual Property Enterprise Court. It was heard on 9th October 2014. Judgment was handed down on 21st November 2014.
In the UK, copyright is infringed by the reproduction of a copyright work (either the whole of it, or a ‘substantial part’) without the consent of the owner. To succeed, a claimant has to show two things:
- Objective similarity – a sufficient number of similarities between the respective designs; and
- Copying – without copying, there is no infringement – no matter how similar the respective copyright works may look (the same requirement also applies to Community unregistered design right).
When two designs share a sufficient number of similarities, an ‘inference of copying’ arises – and the defendant must explain how its design came to share these similarities. Was it from copying – or were the similarities a coincidence of the designer’s own input and influences?
In the Lee Ann Fashions case, the Judge helpfully summarized the steps to be taken into account when considering whether infringement has taken place. The more similarities there are, “the more cogent the defendant’s evidence must be to rebut the inference” that its design was copied.
John Kaldor’s lawyers, Mishcon de Reya, argued on the basis of an earlier copyright case that Lee Ann had to ‘climb a mountain’ to prove that its design was created independently. The judge disagreed that a ‘mountain climbing analogy’ applied, saying instead that the degree of the defendant’s evidential burden depends on the extent of the similarities.
The outcome – no copying
The central issue was whether John Kaldor’s pattern had been copied by Lee Ann. Without copying, John Kaldor’s allegations of copyright and unregistered design right infringement would both fail.
The Judge said Lee Ann’s evidence of independent design was “particularly important in the present case”. The Court considered detailed evidence which we helped Lee Ann’s designer Mrs Vance to prepare, setting out in detail the process by which Mrs Vance created her design – independently, and without inspiration, from the John Kaldor design.
Fortunately, Mrs Vance was very organised (not always a trait of designers!) and had saved each stage and new version of her work in dated files under different numbered codes. Using these records, and the associated metadata, Spearing Waite helped Mrs Vance explain how and when each individual element of the pattern had been created in Photoshop. Mrs Vance was able to provide a detailed, granular account of how her design had emerged, from its rough origins in black and white through to the final colour version approved and signed off by M&S.
‘A key witness’
The IPEC judge, HHJ Hacon, described Mrs Vance as a ‘key witness’. He was persuaded by her witness evidence, saying: “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.”
The Judge found that Lee Ann had not copied John Kaldor’s design. John Kaldor’s claims were dismissed. Lee Ann won the case and the Court ordered John Kaldor to pay its legal costs.
Lee Ann Fashion’s managing director, Suki Johal, commented: “We were relieved and happy to have won the case, and to be cleared of the allegations of copying. We do not copy other people’s designs – Lee Ann Fashions has a proud record of creating original works for clients across the UK and internationally. However, this case is a reminder of the importance of keeping a comprehensive record of our designs. We are extremely grateful to Spearing Waite for their support, and for their expertise in intellectual property law which was invaluable to helping us win this case”.
How to avoid liability for copyright infringement
- Keep a design record – make sure your designers can evidence each stage of their design and any influences. In the Lee Ann Fashions case, the designer had saved each stage of her design with a unique file reference and clearly dated. This was a great help and enabled Spearing Waite to assemble a strong case of independent design.
- Confirm instructions in writing – try to ensure that all instructions to designers are in writing, so there’s a clear brief supporting independent creation at all stages. In the Lee Ann Fashions case, John Kaldor’s lawyers sought to draw negative inferences from the fact that some of the instructions given to Mrs Vance were provided verbally and not recorded. Had these instructions all been confirmed by email at the time, it may have been possible to defeat these arguments straight away.
- Don’t go overboard with witness evidence – focus on getting statements by the key witnesses, rather than dragging everyone in to it. The costs you can claim back in the IPEC are capped, so you should choose your witnesses carefully. The court will look favourably on a conservative approach to legal costs. In the Lee Ann Fashions case, Mrs Vance was best placed to evidence whether the designs had been copied. John Kaldor’s lawyers tried to argue that it was suspicious Lee Ann had not put forward additional statements by the people who had instructed Mrs Vance. But the Judge supported Spearing Waite’s approach, commenting: “Mrs Price aside, it is not clear that the other witnesses would have added anything and in the IPEC the number of witnesses must be kept to a minimum.” Overall, the Judge praised both parties for their ‘efficient’ and ‘rational’ approach to the case, in line with the streamlined approach to litigation characterised by the IPEC.
As a precautionary measure, It is far better and cheaper to get into the habit of compiling evidence of independent design as you go, than to have to scratch around for this important evidence after a claim for copyright infringement comes through the door!
So, keep a trail of the inspiration that leads to your design. Save different versions along the way – from pencil sketches and storyboards through to the final signed off design. Date the versions, and keep them in an archive with related email instructions. Keep a backup too, in case you lose the data on your computer.
The success of the Lee Ann Fashions case hinged on putting together detailed and persuasive evidence from the designer Mrs Vance, showing that she created her design independently. If you have this evidence, and full details of the instructions given to the designers, it is going to be very difficult for others to argue their work has been copied.
Spearing Waite’s IP team is experienced at dealing with copyright and IP litigation. We can help you to deal with, and avoid, copyright and design right infringement issues. Get in touch: firstname.lastname@example.org