Lookalike products and the border between inspiration and emulation is the topic of the latest contribution by Katfriend and occasional guest blogger Rebecca Gulbul, who writes to tell us a tale of a designer who is suffering the effects of what is sometimes referred to as the sincerest form of flattery. This is what she writes:
Stuart Gardiner Design Limited, a registered company, is run by Stuart Gardiner; Gardiner designs and creates his products and has a distribution network through which his products are sold.Around November of last year, he discovered that major retail chain Marks and Spencer (M&S) was selling tea towels with designs which were very similar to one that he had created. While his version was entitled A Seasonal guide to British Fruit and Vegetable, M&S called theirs Seasonal Veg. The numerous similarities included the colour scheme, the tabular format and the theme of the artwork, which focused on vegetables of a particular season. Gardiner contacted M&S which, at that point, had only sold 500 of these tea towels. M&S denied that it had infringed any copyright but agreed to withdraw the 3,500 unsold tea towels from their shops and donated them to a Senegalese charity.
In February this year Gardiner discovered another item which, he believed, was based on one of his designs: a pair of oven gloves sold by Tiger -- a shop dealing in various items for homes and offices. Tiger’s response was that there were vast differences between the products. They pointed out that the nail varnish had no gloss effect, that the male hand had finer hairs and that neither the male nor female hands were wearing bracelets. However, one cannot help but notice the obvious similarities such as the fact that both products feature hands with tattooed knuckles, that both have the word LOVE on one hand and that the nails of both female hands are painted with nail polish, even if the hue is not the same.Gardiner has now said that he has become wary of big high street shops. He said that he hasn’t undertaken legal action yet because of the possibility of incurring high legal costs, but that he is now considering doing so.
On what basis may he do so?
Copyright is likely to subsist in the artwork of both the tea towel and the oven gloves. The print on the items could be considered as an original graphic artwork and entitled to copyright protection under the Copyright, Designs and Patents Act 1988. There would be infringement if the parties copied a substantial amount of this when they created their own works. Being inspired by an artist is not a problem, but copying substantial amounts of the original work is. Clearly M&S and Tiger did not create an exact copy of Gardiner’s works, so the question is whether the amount taken was substantial or not. If this is the case, primary infringement of Gardiner’s artwork will be found.Gardiner’s tea towels and oven gloves may also benefit from unregistered design rights protection in the UK if their design is original, is more than mere surface decoration and has itself not been copied from another design. The artwork should be the result of the independent skill and labour of a designer. Since the company has only been trading for about five years, expiry of the unregistered design rights will not be of concern here. If it is found that M&S and Tiger reproduced the original design by making articles exactly the same or substantially similar, then they may both have committed an act of primary infringement as they both offered these articles for sale. Producing and distributing items which have been substantially copied from an original design, is enough to show primary infringement and, for manufacturing, there is no need to assess whether M&S or Tiger knew that these articles were infringing. M&S had already withdrawn its articles from sale but, so far, Tiger has denied any copying. In its response to Gardiner, Tiger said that there were vast differences between their products. However, the real question is not what differences exist between the two products but whether substantial amounts of Gardiner’s design were taken.
Unregistered Community design rights could also be relied upon. These arise automatically from a design which is novel and has individual character, that is, a design that creates a different overall impression on a user. These rights last three years from when the items in question were first made available to the public; in this case it would be when they have first been used for trade. We do not know for how long Mr Gardiner’s tea towels and oven gloves have been on sale, but if they have been made available for fewer than three years, he should be able to rely on those if he wishes to prove infringement by M&S or Tiger. He would then need to show that copying took place and that a substantially similar design was created.Gardiner does not have a registered trade mark for his creations. However, using passing off may help him stop Tiger’s goods from being distributed. Passing off is not necessarily a straightforward case to argue and it will need to be shown that there is goodwill in the products, that there has been a misrepresentation likely to deceive the public and that the misrepresentation damaged the goodwill of the claimant. Showing goodwill will require that Gardiner can show that customers are attached to his brand; misrepresentation could be explained from the fact that the copied objects look very similar in style to his own products and as a result, some customers could have been confused and bought one product instead of another.The difficulty subsists in determining whether an object was inspired by another or was substantially copied from another. Substantially is itself a hard concept to define. From an economic perspective, it is tricky resisting being inspired by a successful fashionable product and creating your own version, while not knowing how much will amount to too much. For now, we’ll have to wait and see if any action is brought or not.ACID (Anti Copying in Design) report 06.11.13 on the M&S episode here