Berries and Blossom: Overlap between copyright and design right

Intellectual property law has long since 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 came into effect when a design was fixed in a permanent form such as a drawing or model.

One issue with UK unregistered design right was that it did not apply to the surface decoration of the object, although assuming that the surface decoration had some artistic aspect and was not commonplace, copyright can apply to that characteristic.  This was the basis of the Claimant's case in a recent IPEC decision, Bodo Sperlein Ltd v Sabichi Ltd & Sabichi Homewares Ltd.

Background

The Claimant designed a decorative 'twigs and berries' pattern which was applied to ceramic tableware which was sold through his company Bodo Sperlein Ltd (BSL) which was very successful.

In March 2013 BSL discovered that another supplier (the Second Defendant, Sabichi Homewares) was importing tableware with a very similar design which was being sold through a number of outlets, including one operated by the first Defendant.

The decoration had been designed by the Second Defendant with the products being made in China.

BSL claimed that the copyright in the design document had been infringed by the Second Defendant. The Second Defendant's defence was independent creation claiming that their principal designer had produced a design known as 'Twiggy' in or around 2006 in platinum and silver and that it had later changed the colour to red. The Court noted that there were other significant differences between the original Twiggy design and the Defendants' current pattern.

Whether there was independent creation came down to: (1) did the principal designer of the First Defendant copy the Claimant's design when she made the Twiggy design and, if so, did she copy a substantial part, (2) was the Defendants' design a copy of the Claimant's design, and, if so, was a substantial part copied, and (3) if the Defendant's were held to have infringed BSL's design, what was the damage.

The Court had to rely heavily upon the credibility of the main witnesses. The Court felt that the principal designer was 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 managing director of the Defendants', Mr Sam Bagga.

The Judge referred to the principle set out in Designers Guild that, where copying had been established on a visual comparison, it almost inevitably led to the conclusion that a substantial part had been copied.  The test in the instant case was whether the final design used a substantial part of Mr Sperlein's original design.

Decision

The Court held that the similarities between the two designs, particularly the colour, meant that the Defendant's had to produce compelling evidence to disprove the inference of copying.  In confirming this point, the Judge quoted from the principal designers witness statement where she admitted: "I do realise that the Court may look at these designs and have difficulty telling them apart".

Ultimately the Judge felt that the principal designer had failed to show how she independently came up with the design, and although she maintained she had not previously seen the Sperlein designs, there had been a number of opportunities, such as at relevant trade shows, for her to have actually done so.

The court found that copying of a substantial part of the design had occurred and so the Defendant's were liable for importing infringing copies and putting them on sale.

The Court addressed the matter of damages and costs and decided that an account of profits was appropriate in this case.  It awarded BSL £31,703.01 plus interest, based on the total profits made by the Defendants.