Copyright make-up tips - How to make a lasting impression

The 1709 Blog is happy to host this guest contribution by former 1709 Blog team member Hugo Cox (Hamlins LLP) on a recent decision of the High Court of England and Wales concerning copyright and make-up.

Here's what Hugo writes:

Copyright make-up tips - How to make a lasting impression

by Hugo Cox

One of the basic requirements for copyright protection in the UK is ‘fixation’ – the work has to have material form.

But what happens if the work loses its material form? Does the copyright protection disappear too? This question is of some significance to those who create things that do not last, whether they are disposed of, eaten or otherwise annihilated…

The question has now been decided in Islestarr Holdings Ltd v Aldi Stores Ltd, a judgment delivered on 17 June concerning the make-up powder palettes below:

Islestarr had been selling its Filmstar Palette since 2013, retailing for about £49 and clocking sales to date of £12.9m. When Aldi began selling its palette for £6.99 (reduced to £4.99), Islestarr sued for copyright infringement, pointing to Aldi’s slogan ‘Like brands, only cheaper’.

Aldi resisted the claim arguing, among other things, copyright could not subsist ‘in such a transitory medium as the top surface of a powder as the purported copyright work is not thereby fixed.’

The judge took a different view:

I am in no doubt that the design embossed into the powders can be subject to copyright protection in principle. Otherwise, artistic works by, for example, persons who make sculptures out of sand at low water on a tidal beach, which are then washed away, could have no claim to copyright in, say, a pre-construction sketch or photograph of the completed work. Likewise, I can see no reason why the creator of a bespoke wedding cake could not claim copyright in his or her work. The fact that the design in the powders disappears by being rubbed away by the user, does not, in my judgment, affect or remove the copyright protection to which such an artistic work is entitled, as that is as set out as a visual record in Annex 4. In other words, the powders are a three-dimensional reproduction of the two-dimensional object, namely the drawing.

Certainly, this conclusion is aligned with the CJEU’s recent ruling in Levola Hengelo on whether the taste of cheese can be protected by copyright. The CJEU reasoned:

Accordingly, for there to be a “work” as referred to in Directive 2001/29, the subject matter protected by copyright must be expressed in a manner which makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily in permanent form.

The judge in our case then determined:

• Though copyright does not protect individual words (such as the words SCULPT and HIGHLIGHT embossed on the powder), copyright did subsist in the presence of the words as part of the overall artistic work.
• Though Art Deco has inspired the Islestarr designs and Fabergé and others had manufactured objects decorated with sun rays and diamonds, Islestarr had made their own intellectual choices in creating their designs.
• Aldi had admitted being aware of Islestarr’s packaging, there were substantial similarities between the designs and Aldi failed to persuade the judge those similarities did not result from copying.

He therefore decided to award summary judgment against Aldi.

Transient creations are not, it seems, at least in the eyes of UK copyright law, so transient after all.