Copyright infringement of fabric sample—witness evidence is key to outcome

How did the Intellectual Property Enterprise Court (IPEC) approach claims of copyright and unregistered community design infringement in a case involving the alleged copying of a designer’s fabric sample? In John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions Ltd [2014] EWHC 3779 (IPEC), [2014] All ER (D) 238 (Nov), the claimant and the defendant were both companies engaged in the fashion design business. The claimant had supplied the defendant with a sample of fabric. It brought proceedings, alleging that the defendant had breached its copyright and community design right by copying the design of the claimant's sample fabric to create an altered design later used for dresses sold by Marks & Spencer (M&S). The IPEC, in dismissing the claims, held that, on the evidence, the defendant had not copied the claimant's design in the fabric sample supplied to the defendant.

What was the factual background to this claim?

The claimant, John Kaldor, a design house, supplied a 4m sample of this fabric to Lee Ann Fashions. Lee Ann, who makes and designs garments, was interested in seeing the fabric to allow it to pitch for a brief to supply dresses to Marks & Spencer for its Per Una collection. Some time after supplying the fabric sample, John Kaldor became aware of this dress, sold in the Marks & Spencer Per Una collection which had been supplied by Lee Ann.

What were the legal issues?

The design of the JK fabric had been created on a computer, so the artistic work in which copyright was claimed was the relevant computer file. Lee Ann did not dispute ownership and subsistence of copyright or community design right.

John Kaldor brought proceedings alleging infringement of copyright and community design. It alleged that Lee Ann had copied the design of the JK fabric in creating the design of the LA fabric. Lee Ann countered this by averring that the LA fabric had been independently designed.

What did the IPEC decide?

The IPEC dismissed the claims of copyright and unregistered community design infringement finding that the LA fabric had been independently designed.

What should lawyers take from his case?

There are both legal and procedural points to take from this case.

Legal points

Considering the leading case of Designers Guild Ltd v Russell Williams (Textiles) Ltd [2001] 1 All ER 700, [2001] IP & T 277, tweaked in accordance with Infopaq International A/S v Danske Dagblades Forening: C-5/08 [2009] All ER (D) 212 (Aug) (at para [22]), the court summarised the principles to be applied to copyright infringement. The first five of the eight principles are produced below:

'1.  The first stage is to consider whether the claimant has established a prima facie inference of direct or indirect copying by reason of the similarities between the copyright work and the defendant's work.

2.  Similarities which constitute the expression of ideas that have no connection with the literary, dramatic, musical or artistic nature of the work are to be disregarded.

3.  Similarities not thus excluded but which are shown to be commonplace give rise to little or no inference of copying; the nearer a similarity approaches the strikingly original end of the spectrum, the greater weight it carries in supporting an inference of copying.

4.  If the claimant establishes a prima facie case of inferred copying, this may be rebutted by the defendant's evidence of independent design. The stronger the prima facie case, the more cogent the defendant's evidence must be to rebut the inference.

5.  If there is no finding of copying, there is no infringement. If there is a finding of fact that there has been copying, the next stage is to consider whether copying was done either in relation to the copyright work as a whole or any substantial part of it.’

On unregistered community design rights, the court stated that the question of whether the design of the LA fabric does not produce on the informed user a different overall impression to that produced by the JK fabric stood or fell with the question of whether Lee Ann had copied a substantial part of John Kaldor’s design—so there was no distinction between the issues of copying arising in the two causes of action.

On establishing the inference of copying, the court said that this was often looked at in the extreme: Is there an inference of copying or no inference of copying? Here it was more an inference of a possibility of copying. To come to its conclusion, the court looked at the two designs, the design corpus and the pleaded list of similarities. The similarities were not sufficiently compelling. It concluded that there was on the face of it a possibility that there was copying but that the possibility was ‘neither strong nor negligible’. Following that finding, the court said that Lee Ann’s evidence of independent design was particularly important.

The court considered witnesses on both sides to be straightforward. However, the print designer, Mrs Vance, at Lee Ann was considered to be particularly credible. She claimed she had no recollection of seeing the JK fabric—she created the design of the LA fabric independently of the conscious influence of the JK fabric. With regard to indirect copying, Mrs Vance said that she was given a general design brief, including the requirement of a tribal look, as opposed to specific instructions, by way of the starting point for her design process. On the allegation of unconscious copying, the argument could only be sustained by a strong inference of copying from similarities between the two designs and the court had already determined that similarities between the two designs were not sufficiently compelling from which to infer a strong inference of copying.

Mrs Vance, who gave her evidence ‘quietly and carefully’, appears to have been key in this case. Lee Ann may also have benefitted from the Civil Procedure Rules 1998, SI 1998/3132, PD 63, para 29.2(2) cost-benefit test. There was an allegation that in a conversation between employees of John Kaldor and Lee Ann, a Lee Ann employee (Ms Price) admitted that Lee Ann had ‘re-worked the JK fabric to create the Lee Ann fabric’. This employee was not called to give evidence and so the court did not place any great reliance on it.

IPEC procedural points

The court recorded that it is inappropriate for IPEC cases to be run on the traditional basis of ‘taking every conceivable point’. It highlighted use of the cost-benefit test by the application of CPR PD 63, para 29.2(2) at the case management conference. The IPEC Guide provides for the basis on which the court will decide whether to permit material to be filed in a case—by applying the cost-benefit test (CPR PD 63, para 29.2(2)) and by giving permission in relation to specific and identified issues only (CPR PD 63, para 29.2(1)).

It may be of interest to lawyers that there was some judicial pressure exerted at the case management conference regarding the defendants’ position on subsistence and ownership of copyright.

As mentioned above, the limits on evidence, especially on calling witnesses may be of particular benefit to one party in a matter and should be given careful consideration. Who knows what impact the evidence of Ms Price may have had on the outcome—certainly the court seemed reluctant to draw an adverse inference from this evidence not having been made available to the court.

A party’s fortunes in a case will often change dramatically at trial based on the credibility of its witnesses. Lawyers should take into account that when it comes to evidence, the lack of free rein in the IPEC could mean a surprising result and advise clients accordingly at the outset of a claim.


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