Wednesday 13 May 2015

A case of Berries triumphing over Blossom

Since at least the middle of the last century intellectual property law has recognised the overlap between copyright and design right. The Registered Designs Act 1949 was intended to create a separate system for protecting designs for practical items which did not fall into any of the categories protected under the existing copyright or patent law. The Copyright Designs and Patents Act 1988 then introduced a separate (unregistered) design right which, like copyright, came into effect at the moment a design was fixed in some permanent form such as a design drawing or prototype.

One of the drawbacks of the UK unregistered design right is that it does not apply to the surface decoration of the object, although assuming that the surface decoration has some artistic aspect and is not commonplace, copyright might well apply to that characteristic of the product.

And this was the basis of the claimant’s case in a recent IPEC case, Bodo Sperlein Ltd v Sabichi Ltd & Sabichi Homewares Ltd heard before His Honour Judge Hacon over two days back in March.

In 2001 Mr Bodo Sperlein designed a decorative pattern (shown on the right) intended to be applied to tableware, consisting of twigs bearing red berries. Understandably the design was marketed as the Red Berry collection. Mr Sperlein produced this ceramic tableware through his own company Bodo Sperlein Ltd (BSL) and it was very successful.

In March 2013 the company discovered that another supplier (the second defendant) was importing tableware with a very similar design (theirs was known as ‘Red Blossom’) and was selling it through a number of outlets, including one operated by the first defendant. At trial it transpired that the Red Blossom decoration had been designed by the second defendant although the actual products were made for them in China - the country, not the type of ceramic! Because Sabichi Ltd and Sabichi Homewares Ltd have the same managing director who was seen as the controlling mind of both companies, they were referred to jointly as ‘Sabichi’ unless it was necessary to distinguish the individual actions of one or other company.

BSL claimed that the copyright in the design document for the Red Berries had been infringed by Sabichi Homewares Ltd. Sabichi Homeware’s defence was one of independent creation. Their principal designer, Ms Hayley Adams had produced a design known as ‘Twiggy’ in about 2006 and this used the colours platinum and silver. After Ms Adams had left Sabichi, the company resurrected the design and changed the colour to red. The court noted that there were other significant differences between the original Twiggy design and the Red Blossom pattern which appeared on the final products.

BSL sought to undermine the independent creation defence by submitting that a Ms Jenna Blackwell who Ms Adams had identified as her assistant when she was at Sabichi, was probably the same person as a Ms Jenna Backwell who had applied to work at BSL in February 2010. In her application to join BSL, Ms Backwell spoke of her various research projects, including frequent trips to the Maison & Objet show held annually in Paris. It was at the Maison & Objet show in 2002 that BSL had launched their Red Berries range, and this was featured in a number of subsequent shows including in 2005 when Ms Backwell attended the show. The court was not required to decide if Ms Backwell was the same person as the Ms Blackwell referred to by Hayley Adams because it transpired that Ms Adams had herself also visited the Maison & Objet show while she was employed by Sabichi, and when the BSL Red Berries range was on display there. The BSL evidence concerning Ms Backwell (who did not appear as a witness) was only submitted on the first day of the trial, but HHJ Hacon allowed it to be admitted in view of its probable significance in the case and because the defence would have the opportunity to test it in cross-examination. The judge also, reluctantly, allowed Sabichi to introduce some late evidence about the early development of the Twiggy design, but only on the condition that Ms Adams was recalled on day two for cross-examination on this new evidence.

Twiggy was shocked
The submission of the new Twiggy evidence significantly altered Sabichi’s version of events. The introduction of later versions of Twiggy (designs 2 – 6) now accounted for the way in which the Twiggy design came to match the Red Blossom design which appeared on the finished product marketed by Sabichi.

The issues it came down to were: did Hayley Adams copy the Red Berries design when she made the Twiggy design and, if so, did she copy a substantial part? Is the Red Blossom Design a copy of the Red Berries design, and, if so, was a substantial part copied? If Sabichi were found to have infringed BSL’s design, the court would then have to deal with certain matters concerning the quantum, and costs.

As is often the case where independent creation is argued, the court had to rely heavily upon the credibility of the main witnesses. Ms Adams was thought to be generally truthful and accurate in her evidence, but seemed to be conscious of ‘not letting the side down’ However the court was less impressed by the performance of Mr Sam Bagga, the managing director of both defendants.

HHJ Hacon referred to the principle set out by the House of Lords in the Designers Guild case that, where copying had been established on a visual comparison, it almost inevitably led to the conclusion that a substantial part had been copied. But he noted that in the current case, the chain of development, especially of the Twiggy/Red Blossom design, meant that the question of substantiality might not be so clear cut. The test in this case was whether the final Red Blossom design used a substantial part of Mr Sperlein’s original design. The judge noted in passing that the likelihood of the defendants having access to the Sperlein original drawings was not at issue, and that if copying had occurred, it would have been of the actual pattern which appeared on the Red Berries collection of tableware. It was not disputed that the original Red Berry design and the actual pattern which appeared on the Red Berry range of tableware were essentially the same. If copying had occurred, there were several points in the process at which this could have occurred: in Ms Adams’s original Twiggy design, in the later re-worked Twiggy designs, or after Ms Adams had left the company when the Twiggy design was modified under the direction of Mr Bagga to become the Red Blossom design. In the end the court felt it was not necessary to decide exactly when the copying might have occurred [41].

In the final analysis the court found that the similarities between the two designs, particularly the colour used in both cases, meant that the defence had to produce strong compelling evidence to disprove the inference of copying. In confirmation of his conclusion on this point, the judge quoted from Ms Adams’s witness statement where she admitted: “I do realise that the Court may look at these designs and have difficulty telling them apart”. He felt that Ms Adams had failed to demonstrate how she was inspired to independently come up with the Twiggy design, and although she maintained she had not previously seen the Sperlein designs, there had been a number of opportunities, such as the 2006 Maison & Objet show, for her to have actually done so. Mr Bagga’s evidence on how the choice of colour for the Red Blossom came to be made was judged even less convincing.

The court found that copying of a substantial part of Mr Sperlein’s design had occurred and so Sabichi were liable for importing infringing copies into the UK, and placing them on sale.

The court decided to address the matter of damages and costs, without the need for a split trial. The main dispute centred on whether an account of profits was an appropriate remedy. The defence, quoting Kitchen LJ in Hollister Inc v Medik Ostomy Supplies Ltd, argued that this would not be proportionate, and that since an account of profits was an equitable relief, the court had discretion as to whether to apply it or not. As this was a matter of secondary infringement, knowledge by Sabichi that the goods were infringing copies would need to be demonstrated if they were not to escape liability for damages. HHJ Hacon had no difficulty in deciding that the defendants had the necessary knowledge, in view of Mr Bagga’s clear involvement in design and production of the Red Blossom range. He decided that an account of profits was appropriate in this case, and awarded BSL £31,703.01 plus interest, based on the total profits made by both defendants. 

Drawing of Twiggy by Failuresque. Used under a Creative Commons Attribution 2.0 Generic licence

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