Battle of the Bed Linen

At the end of September, a case was heard in the Intellectual Property Enterprise Court (IPEC) which highlights both the strengths and weaknesses of that court and its streamlined procedures. The case was T & A Textiles v Hala Texile UK Ltd and others, and it was heard before Mr Douglas Campbell sitting as a Deputy High Court Judge. The judgment has just been handed down.

This was primarily a case about copyright infringement of the artistic designs for bed linen, although there was also a complaint concerning the registered design of some packaging and a counter-claim of making threats contrary to s 26 of the Registered Designs Act 1949. Although a number of designs were involved, the court looked specifically at the claimant's design known as Chantilly, and the defendant's design known as Richmond, which are shown here.

Claimant's 'Chantilly' design

Defendant's 'Richmond' design

Having established that the defendant had had access to the claimant's designs, it might seem that all the court had to do was assess the extent to which the one design copied the other. But this was not necessary, since the defendant's defence was not only one of independent creation, but of prior creation. And the court took the view that the defendant had in fact been selling their Richmond product before the date that the claimant claimed to have designed their product, and so the copyright infringement claim failed.

However as is evident from the judgment, the court had to make this finding based on inadequate evidence and in some instances, poor cross-examination of the witnesses. As many readers will know, the major 'selling point' for the IPEC is its procedures to maintain a tight control over both the cost and the complexity of the overall case. Thus the case management (CMC) aspect is key to keeping the hearings slick and relevant. But where matters are complicated, or become more complicated than at first appreciated, such limitations may have an adverse impact on the administration of justice.

In this particular case two things occurred to make the otherwise sensible CMC directions rather too rigid when it came to trial. The first was that discovery did not go well: the claimant needed extra prompting to deliver the original digital design files and even when they were made available, there were discrepancies between the dates on the files, and the dates the claimant asserted the works had been created. This matter was not adequately resolved at trial. Furthermore, the defendant was unable to deliver up the design files for its products as these were the property of a company in Pakistan which was not prepared to release them. But potentially more damaging to the defendant's case was the accusation that a statement by one of its key witnesses (Mr Amin, said to be the designer of the Richmond and other alleged infringing designs) had been forged without his knowledge. There were counter claims that the claimant had tried to coerce Mr Amin into providing a statement which supported the claimant's case. Since Mr Amin lives in Pakistan and did not appear either in person or via video link before the court, this posed difficulties in testing his evidence. The judge was therefore forced to look very carefully at the balance of probabilities when assessing both the incomplete evidence and the less than probing cross examination. In addition, both parties sought to submit new evidence just two days before the trial, some of which the judge agreed to, and thus it meant that counsel had much less time to prepare their respective cases than would normally be expected with careful case management.

On the matter of the registered designs, the court found that the claimant's registered design was invalid by virtue of there being a previous existing design in use by a number of other people. With regard to the defendant's counter-claim, the claimant was found to have made threats contrary to s 26 RDA. This was in respect of a letter from the claimant's solicitors to eBay which referred to the impending legal action. This letter was found to have gone beyond what is normally acceptable under s 26(3) RDA - 'mere notifiction' of a rightsowner's claim to a particular piece of intellectual property - as it implied that eBay could also become liable in the same action, if they (eBay) did not remove the listings complained of.

I doubt if the claimant T & A Textiles will seek to appeal. They are unlikely to count this case as being their finest hour, and can truly be said to have lost the case. Had the parties spent more time prior to trial in trying to achieve a settlement, during which the salient facts about dates might have become available, a great deal of the legal costs might have been avoided. For the IPEC, although undoubtedly the correct findings were made, this sort of rushed and half prepared case does not serve as a good advertisement for justice, or as a good use of the court's time. Perhaps a second CMC and a postponed (and then possibly unneeded) trial would have produced a more satisfactory outcome.

Copyright in an Etched Floral

A recent spat between UK designer Rachael Taylor and retail giant Marks and Spencer demonstrates just how important it is for designers to protect their intellectual property.

Rachael Taylor created her "Etched Floral" hand drawn design in 2008 and since then she has produced various products bearing the design, including wallpaper, oven gloves, lampshades and tea towels. These products have been featured in a number of magazines, therefore one assumes that the design is relatively well-known in the world of etched floral designs.

M+S recently launched a new range of t-shirts bearing what Taylor calls a "strikingly similar" design. M+S's t-shirts can be seen alongside Taylor's products on her blog, so you can decide for yourself how similar the designs are. Pretty similar, is this blogger's conclusion.

© Holly Hayes

Taylor complained to M+S about a month ago and they responded saying that they were "unaware of the design". If they didn't copy her design it's not copyright infringement, however Taylor went a step further and decided to use social media to complain more publicly. Without admitting liability, M+S then pulled the product, saying: "We are sorry for any disappointment caused to Rachael Taylor Designs from the sale of a T-shirt that we bought in good faith from a direct supplier. After investigating the complaint we immediately withdrew the product from sale."

Taylor's request to high street retailers is that they publicly sign up to a pledge initiated by the Anti-Copying in Design Group, set up to protect independent designers from copyright infringement and to represent them in disputes. John Lewis, Next and Selfridges have signed up and have promised to commission rather than copy designs.

Copyright cannot be registered in the UK. This clearly benefits independent designers who may not know how or may not have the resources to register copyright in each of their designs, however it also means that in cases like this designers need to show copying in order to prove that copyright in their work has been infringed. It also means that retailers have no way of checking whether their suppliers are providing them with original works or not.

Taylor could of course have registered her design, which would have made her battle much easier, however many designers aren't aware that they can register designs, and even in larger companies the right is under-used. Registered designs are seen as complicated and niche rights however as this case demonstrates, in order to protect designers it is time that registered designs became more mainstream.