Kylie Minogue not so lucky in IPEC copyright infringement claim

A copyright dispute in the Intellectual Property Enterprise Court has ended in tears [presumably on a pillow] for Kylie Minogue's bed linen licensee, Ashley Wilde, in Ashley Wilde Group Ltd v BCPL Ltd [2019] EWHC 3166 (IPEC).

Background

BCPL, the defendant, is owned by Caprice Bourret, a well-known model and TV star. BCPL makes and sells  bed linen products (among other things) under the "By Caprice Home" brand; two of these products, a duvet cover and a matching runner, were the subject of the dispute (the "Amore products").

It was common ground that Ashley Wilde owns copyright in the prototype fabric design (an artistic work) for the "Evangeline" duvet cover in the "Kylie Minogue at Home" range. The cover was sold in the UK online and in physical stores in 2014-15 at least. As readers can probably see for themselves, the design (top of the below image) features a repeating horizontal pattern of "scallop-style" pleats.

Com-pleat rip off or coincidence? [groan...]

Around 2017, BCPL began selling the Amore products in the UK. The products featured the design shown in the lower part of the photo above. The products were designed by a freelance designer named Fiona Graham together with Tansy Wilson of the manufacturer in China, and approved by Ms Bourret herself.

Ashley Wilde sued BCPL for copyright infringement, relying on the following similarities to create a presumption of copying:

• The choice of a pattern of scallop-style pleats in repeating horizontal rows; 
• The relative size of each pleat; 
• The relative spacing between each pleat; and
• The relative spacing between each horizontal row. 

The parties adduced evidence from various witnesses (including Ms Graham) and one expert witness in relation to textile design each.

The judgment

Her Honour Judge Melissa Clarke delivered a pithy judgment in this case. She emphasised that the question of copying is one of quality, not quantity (Ladbrokes v William Hill) and that a substantial part of a work will have been copied if the parts taken express the intellectual creation of the author (Infopaq). Designers Guild dictates that a prima facie presumption of copying will arise if there is a substantial similarity between the copyright work and the allegedly infringing copy, and there is proof of access to the copyright work (or to intermediate works, such as the Evangeline duvets in this case). There was an interesting scuffle regarding whether the judge should first establish whether the Amore products reproduced the whole or a substantial part of Evangeline design before moving on to consider whether the reproduction was the result of copying, or to identify the copied parts first before considering substantiality. The judge (rightly) preferred the latter option, but nothing seemed to turn on this in the end.

Ashley Wilde got into trouble over its expert evidence. Its expert, Mr Herbert, was initially engaged to "provide an opinion on the similarities between the designs" and to identify evidence to support Ashley Wilde's case, at first the form of an informal opinion. Following the informal opinion, Ashley Wilde applied to adduce expert evidence from Mr Herbert, and Mr Herbert turned his informal opinion into a formal report. Cross-examination, however, revealed that the presentation of Mr Herbert's report downplayed the differences between the parties' respective designs. This, together with the potential effect of Mr Herbert's initial basis of instruction on his impartiality, was enough to cause the judge to disregard the opinions in his report in reaching her decision.

So: was it the case that Ms Graham saw the Evangeline design, just couldn't get it out of her head, and copied it? The judge found that the documentary and witness evidence suggested that it was possible that Ms Graham had access to the Evangeline duvet in her previous role as a buyer for Shop Direct.

This did not matter, though. There were several differences between the Evangeline design and Amore products, including the method of pleating, the number of pleats, the size and shape of the pleated scallops, the positioning of the rows of pleats and the number of repeating scallops. The judge accepted that scallops, pleats and scallop pleats have been widely used in textiles for centuries, but not the suggestion that a decorative motif of pleated scallops is commonplace for duvet covers. Consequently, the only relevant similarities remaining between the Evangeline design and the Amore products were: (i) the crescent shape of the pleated scallops; (ii) the broadly similar size of the scallops; and (iii) the broadly similar spacing between horizontal rows of these ((ii) and (iii) are interrelated).

Consequently, there were not sufficiently close, numerous or extensive similarities to create the presumption of copying. BCPL, meanwhile, had a credible (if not compelling) story of independent creation. The judge therefore found that BCPL did not infringe Ashley Wilde's copyright.

Comment

In a way, this case concerns simply the good old-fashioned idea/expression dichotomy. Although the parties' respective products were both available in the UK within a few years of each other, the evidence showed that scallops and pleats were "having 'a moment'" in the fashion and interior design industries in 2016, when the Amore products were designed. Although conceptually the parties' products were similar, the respective expressions of the relevant idea were not particularly similar.

Ashley Wilde was clearly left spinning [around] by the total rejection of its expert evidence on the basis of partiality. Because there was no "smoking gun" hidden in BCPL's story of independent creation, Ashley Wilde needed its evidence regarding close similarities to be persuasive. Unfortunately for Ashley Wilde, this was not to be.