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Monday, 21 May 2012

Sympathy for Dahlia -- but the skort goes back to court

This is a tale of two garments, unregistered design rights, allegations of infringement and an unsuccessful application for summary judgment -- all told by Judge Birss QC in the Patents County Court, England and Wales, in Dahlia Fashion Co Ltd v Broadcast Session Ltd [2012] EWPCC 23 (16 May 2012). Dahlia claimed that Broadcast infringed its unregistered design rights when it sold copies of the Dahlia Skort Playsuit and the Dahlia Betty Dress (for those not familiar with the lingo, a ‘skort’ is a garment which looks like a skirt but is actually a pair of shorts).

In relation to the Dahlia Skort Playsuit, Broadcast challenged the subsistence and ownership of Dahlia's rights and alleged several differences between the Dahlia Skort Playsuit and the version it sold. Dahlia believed these points would fail at trial, but accepted that summary judgment in its favour could not be granted in respect of the Dahlia Skort Playsuit.

In relation to the Dahlia Betty Dress (left), Broadcast did not admit the subsistence nor ownership of the rights claimed by Dahlia. Judge Birss QC stated that Broadcast’s version was ‘plainly virtually identical to the Betty Dress’ (at [3]). In response to the allegation of flagrant infringement by Dahlia, Broadcast contended that they had no reason to believe that the dress was copied from or infringed any rights in the Betty Dress. Dahlia sought summary judgment of its claim in respect of the Betty Dress.

Judge Birss QC would have had ‘no difficulty giving summary judgment for Dahlia’ except for one point (at [9]): both the Betty Dress and the Dahlia Skort Playsuit were the result of a commission to the same freelance designer Katherine Graziano. In relation to the Dahlia Skort Playsuit, Broadcast challenged the subsistence and ownership of Dahlia’s rights by alleging that Ms Graziano did not in fact design the garment, but only made minor modifications to an existing design sourced from China. Dahlia denied this and argued that Broadcast simply had no defence in relation to the Betty Dress.

Although Judge Birss QC had ‘considerable sympathy’ with Dahlia, he declined to grant it summary judgment in relation to the Betty Dress because it would have been ‘wrong to do so’ (at [12] and [15]). His Honour stated that Broadcast’s defence in relation to the Betty Dress was weak (at [14]). On the material before him, he believed that it was much more likely that Dahlia than Broadcast would win at trial. However, he noted that if the argument about the Dahlia Skort Playsuit did succeed, which was possible but unlikely, it was also conceivable but unlikely that that result would have a knock on effect on the Betty Dress as it was designed by the same person working as a freelance designer for Dahlia in the same circumstances.

Not all was lost for Dahlia. Taking into account the weakness of Broadcast’s defence and the proportionality of costs in defending the claim (Broadcast had only sold £477 worth of its Betty dresses), Judge Birss QC ordered that Broadcast pay £10,000 into court as security for Dahlia’s costs (at [20]).

The IPKat, noting the judge's sympathies, his views as to the weakness of the defence and the large sum which the defendant has been asked to produce by way of security for costs, suspects that these proceedings may mark the end of this litigation.

Merpel is very excited about the judge said about this being a paper hearing (at [5]):
"It seemed to me the summary judgment application could be dealt with on paper. I directed that the parties should consider whether they accepted the application should be dealt with on paper once the evidence was complete. Written evidence was exchanged and the parties agreed to the application being determined that way. The defendant wanted to file written submissions and I directed that brief written submissions should be filed, limited to four pages each".
She has often heard people talking of an action folding; now she knows why ...

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