Blossoming copyright infringement of berry nice dinnerware

In Bodo Sperlein Ltd v Sabichi Ltd and another [2015] EWHC 1242 (IPEC) how did the Intellectual Property Enterprise Court (IPEC) approach a copyright infringement case involving tableware designs?

What was the background to this case?

Bodo Sperlein (BSL) is a designer specialising in ceramics. In 2001 Mr Sperlein of BSL created a design for tableware called the ‘red berry’ design (see annex 1 to the judgment for an image of the red berry design). This design was then used on a tableware collection. The collection was launched in September 2002 at the Maison et Objet trade show in Paris.

Sabichi Homewares (Sabichi) created a ‘red blossom’ design for tableware which it sold in department stores. An image of a sample of the red blossom design is shown at annex 2 to the judgment. The red blossom design was developed in two stages. Hayley Adams, a designer at Sabichi created a design called ‘twiggy’ in 2006. The twig design was created in the colours of platinum and silver. Ms Adams later left Sabichi and in 2008 the twiggy design (or a similar design) was brought out of the company’s archive and sent to China for the manufacture of tableware, not in platinum and silver but in the colour red.

Tableware sporting the red blossom design was spotted by BSL in a store in Guildford. BSL alleged copyright infringement of its red berry design by Sabichi copying, importing and selling its design.

What were the legal issues?

That copyright subsisted in the BSL design and that it was owned by BSL was not in dispute.

The issues were:

  1. Whether Hayley Adams copied the red berry design when she created the twiggy design?
  2. If so, whether she copied the red berry design in substantial part?
  3. Whether the red blossom design is a copy of the red berry design?
  4. If so, whether it is a copy in substantial part?
  5. If Sabichi were found liable for copyright infringement, whether the court should exercise its discretion to allow an account of profits?
  6. If so, what costs were deductible from Sabichi’s gross profits so as to arrive at the sum due to BSL?

As well as proving primary infringement, BSL had to show that in relation to the allegations of sale and importation, Sabichi had the requisite knowledge to establish secondary infringement. However, the requirement for knowledge would fall away if copying was proved.

In considering the allegation of copyright infringement in the context of copyright in a fabric the court referred toJohn Kaldor Fabricmaker UK Ltd v Lee Ann Fashions Ltd [2014] EWHC 3779 (IPEC), [2014] All ER (D) 238 (Nov). See our News Analysis article: Copyright infringement of fabric sample—witness evidence is key to outcome for the court’s list of the principles to be applied to copyright infringement.

What was the outcome?

Copying

The court considered the similarities between the two designs to be ‘very striking indeed’ and that it was inconceivable that the exact same colour of red would be employed by Sabichi in its design unless copying had occurred or there was a very convincing explanation otherwise. The court found:

  1. there was a prima facie inference of copying that Sabicini did not rebut
  2. the copying was indirect and was copied in substantial part
  3. Sabichi infringed BSL’s copyright by the importation into the UK of Blossom ceramics and their sale

Whether an account of profits should be refused

Sabichi argued that the court should not use its discretion to order an account of profits. It argued that an account would produce an unjust result as Sabichi was ‘entirely innocent’ within the meaning contemplated by previous case law.

The court found that there was is no justification for refusing an account of profits in this case. The main head of infringement of copyright in these proceedings was secondary infringement by reason of importation and sale requiring BSL to establish that Sabichi knew or had reason to believe that the red blossom dinnerware bore infringing copies of BSL’s copyright work. As the court had made a finding of copying ‘knowledge’ was established.

Quantum

Referring to OOO Abbott v Design & Display Limited [2014] EWHC 2924 (IPEC), [2014] All ER (D) 31 (Sep) which summarised the law on the costs which may be deducted from gross profits when assessing the appropriate profits payable by a defendant in an account, the court found the Sabichi companies liable for their collective profits from sales in the collective sum of £31,703.01.

What points may lawyers take from this IPEC case?

Copying

The similarities between the red berry design and the red blossom design, particularly regarding the colour are obvious (even to the untrained eye) and therefore would have been obvious to Sabichi’s lawyers. Faced with this situation, lawyers should be alive to the apparent reluctance of the courts to consider ‘differences’ when it comes to similar works and focus their efforts on providing compelling evidence that explains the similarities between the original and the alleged copy.

Account of profits

The trial concerned both liability and the quantum of profits, if liability was established. In support of this, the parties filed pleadings and evidence in relation to an account of Sabichi's profits.

Lawyers should consider this potential advantage (or disadvantage) of the IPEC that a summary account of profits might be undertaken immediately following a finding of liability. The winning party will then receive its award straightaway. This is a factor that lawyers may wish to discuss with their clients when deciding where to issue a claim.

Introducing new evidence on the day of trial

It is refreshing to see in this case that both sides applied to file new evidence on the first day of trial, and were successful in these applications. In both cases the evidence was considered to be highly relevant. The Sabichi evidence was allowed despite the fact that the delay in filing was caused by a mistake by Sabichi itself or its solicitors (see paras [16]–[22] of the judgment).

The witnesses

Witness evidence is usually pivotal in determining the outcome of a claim. However, the pace of IPEC proceedings and the resources allocated to them, make witnesses and their evidence particularly important. In this case there were three key witnesses. The court found Mr Sperlein to be an honest witness and Ms Adams (for Sabichi) to be, on the whole, accurate but trying to help Sabichi’s case which cast some doubt on her reliability as a witness. Mr Bagga (for Sabichi) was declared not to be a satisfactory witness.

Lawyers should not be afraid of re-evaluating client prospects following the exchange of evidence in IPEC cases even if new evidence is introduced at trial, as proceedings may even then be stayed to allow the parties to attempt to negotiate a settlement.

Canny LinkedIn research

Lawyers should consider paras [16] and [17] of the judgment. BSL’s lawyers spotted on LinkedIn that Ms Adams’ assistant Ms Blackwell had applied for a job at BSL in 2010. Her CV (retained by BSL) revealed that she had attended the Maison & Objet trade show in Paris where the red berry collection had featured. Data protection andEquality Act 2010 issues aside on the retaining of the CV, this was some inexpensive research that paid off for BSL. This proves that a canter through social media and the Internet may prove fruitful when considering design influences.

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