How can a company prove that its designer came up with a print independently?
A recent decision in the Intellectual Property Enterprise Court (IPEC) shows that if there are sufficient differences between the print and the design it allegedly infringes, then clear and credible evidence from the relevant designer will be key.
The claimant, John Kaldor, is a design house which makes and designs fabrics. At issue in these proceedings was the print shown on the left below, a sample of which it had provided to the defendant. The judgment is available here.
John Kaldor alleged that the dress, shown on the right below, supplied by the defendant ladieswear manufacturer Lee Ann Fashions (Lee Ann) to major retailer Marks & Spencer, infringed its copyright and unregistered Community design.
John Kaldor was unsuccessful in its claims. The judge held that the designer of the Lee Ann print had not copied the John Kaldor design.
John Kaldor had argued that the judge should infer copying from the similarities between the two prints. The judge considered the two prints, the design corpus and the pleaded list of similarities. Having done so, he held that that "there is a prima facie possibility that there was copying, but the possibility is neither strong nor negligible".
The evidence from Lee Ann's designer that she had created its print independently was accordingly decisive. John Kaldor first argued that she had directly copied its design. She countered this with evidence of her design process and how she had created the print without reference to the John Kaldor fabric.
The judge held that her explanation was "credible on its face". He then considered the access which she had had to the claimant's print. There had been one meeting and various emails between representatives of the parties. John Kaldor had provided a sample of its fabric to Lee Ann; Lee Ann had made a dress from this to show Marks & Spencer. Yet the designer said she had no recollection of seeing either the John Kaldor sample or the dress made from it, even while conceding it was possible that she had done so. The judge preferred her evidence.
John Kaldor's second argument was that there had been indirect copying. It argued that one of the Lee Ann representatives with whom it had been in contact must have given detailed instructions to the designer so that her print was a copy of its design.
Again, the judge did not agree. Of general interest is his decision not to draw adverse inferences from the fact that some of the relevant Lee Ann employees did not give evidence, emphasising that "in the IPEC the number of witnesses must be kept to a minimum."
Finally, John Kaldor argued that there had been unconscious copying. The judge explained that "[this] argument could only be sustained by a strong inference of copying from similarities between the two designs". Here the similarities were not "sufficiently compelling".
The case provides a useful reminder of the importance of the evidence of a designer in cases where copying is not clear-cut. It also serves as a reminder that the IPEC's procedure is more streamlined, and parties do not need to provide evidence from every conceivable witness.