Date: 14 November 2019
In Islestarr Holdings Ltd v Aldi Stores Ltd, the High Court has granted Islestarr summary judgment on its claim against Aldi for infringement of copyright in two artistic works.
Two designs were at issue: one embossed onto the lid of a make-up palette and another which was embossed into make-up powder. Deputy Master Linwood dismissed Aldi’s argument that no copyright could subsist in the powder design due to its ephemeral nature. Equally, Aldi’s argument that both works were generic art deco designs fell on deaf ears: the Deputy Master found no element of “slavish copying” from any prior art. The Deputy Master found that Islestarr was entitled to ownership of the copyright and that Aldi had no real prospect of successfully defending Islestarr’s claim for copyright infringement. In coming to his decision, the Deputy Master commented that a witness statement filed by Aldi’s solicitors failed to comply with the Civil Procedure Rules.
As shown below on the left, the words “sculpt” and “highlight” appear in Islestarr’s Filmstar Palette about midway in the left and right-hand powders, in-between the rays of the Starburst Design. The picture of Aldi’s palette (shown below, on the right) is insufficiently clear, as the words “shape” and “glow” appear about midway in the left and right-hand powders, in between the rays of the Starburst Design.
Islestarr alleged that Aldi had incorporated infringing copies in its “cheap lookalike product” and then quoted Aldi’s advertising slogan, “Like brands, only cheaper” which Islestarr said demonstrated Aldi’s ethos of selling lookalike versions of well-known brands cheaply to encourage footfall in their stores.
Aldi argued that that copyright could not subsist in a transitory medium such as the top surface of a powder as there was no fixation, and relied on Merchandising Corp of America Inc v Harpbond Ltd  F.S.R. 32, in which the facial make-up of the musician, Adam Ant, was found not to be protectable as there was no medium in which it was fixed.
However, Deputy Master Linwood took the view that there was fixation, and also provided some examples of other artistic works featuring transitory fixations that should satisfy the requirements for copyright subsistence: “I am in no doubt that the design embossed into the powders can be subject to copyright protection in principle. Otherwise, artistic works by, for example, persons who make sculptures out of sand at low water on a tidal beach, which are then washed away, could have no claim to copyright in, say, a pre-construction sketch or photograph of the completed work. Likewise, I can see no reason why the creator of a bespoke wedding cake could not claim copyright in his or her work.”
On the balance of probabilities, the Deputy Master was satisfied that Islestarr had established title to copyright and ownership of the Starburst and Powder Designs. The designers had rightly acknowledged the art deco inspiration and - although there was no copyright in such generic ideas - the evidence explained and documented the development of each design to such an extent that the Deputy Master was convinced that the designers had made their own and/or joint intellectual choices in the creation of both the Starburst and Powder Designs. Accordingly, he found both designs were original and copyright subsisted in them.
After visually comparing the designs, the Deputy Master concluded that the similarities were substantial, both from a quantitative as well as a qualitative perspective. Aldi admitted that the designers of the designs on its products were aware of Islestarr’s Filmstar Palette when Aldi’s designs were created. In short, Aldi had prior access. The burden therefore passed to Aldi to satisfy the court that those similarities did not result from copying and nothing in its draft defence or evidence persuaded the Deputy Master that it had discharged that burden. Accordingly, he found that Aldi had no real prospect of successfully defending Islestarr’s claim for copyright infringement of each design.
Aldi are undoubtedly skilled players of the “skating close as possible to a brand without passing off” game, and have succeeded in actions bought against their efforts to imitate the packaging of brands such as Moroccanoil. Relying on copyright in artistic works on the packaging or product as opposed to passing off raises the possibility for the claimant of applying for summary judgment or an interim injunction without having to establish the three elements of passing off, namely goodwill or reputation in the goods or services by association with a particular “get up” which the public could recognise as distinctive of the claimant’s goods and services, misrepresentation and that damage has or will be caused—the so-called “classical trinity”, which can make passing off claims challenging and expensive to fight. The disadvantage of basing an infringement claim on breach of copyright is that the actual damage caused by an infringement can be minimal, as the measure used to calculate damages is likely to be the amount that a willing licensee would pay a willing licensor in a hypothetical negotiation over the copyright in question, as opposed to the loss of sales to the claimant. However, the real value is an injunction prohibiting the infringing party from further copyright infringement.
Our Partner Katie Cameron and Janet Strath examine this ruling in depth in the full article published in the upcoming Entertainment Law Review: Ent. L.R. 2020, 31(1), 35-38
For more information on our work defending brands and their disinctive intellectual property, please visit our page on Copyright