On 8 May 2015, His Honour Judge Hacon handed down judgment in the Intellectual Property Enterprise Court (IPEC) in respect of a copyright infringement claim.
The case provides a helpful analysis of when an inference of copying may be established; in what circumstances late applications to introduce new evidence should be allowed in IPEC; and, in circumstances where the issue of quantum (i.e. if a claimant is successful, how much should the defendant pay to them) was dealt with at the same time as a liability. The full judgment can be found here.
The case involved a berry design created by the Bodo Sperlein in 2001 called “Red Berry”, which was placed on various different pieces of tableware and proved to be a success.
In 2013, an employee of Bodo Sperlein came across items of tableware in a store run by the first defendant which they initially believed were part of the Red Berry range that was produced by Bodo Sperlein. However, upon closer inspection, the products bore the name of Sabichi and came from their own range of tableware called “Red Blossom” and litigation ensued.
Inference of copying
In this case, it was found by HHJ Hacon that there would be an inference of copying, as the designs were so similar. In particular, the fact that exactly the same shade of red was used for the berries in both designs made it almost inconceivable that no copying had taken place without a compelling explanation.
HHJ Hacon then had to consider whether the defendants had produced compelling evidence of independent design, therefore rebutting the inference of copying. As the designer or the design assistant could have seen the Red Berry design, and no evidence of an alternative source of inspiration was provided by the designer, it was found that the Red Blossom designs were copies of the Red Berry design.
Given that copying had been established, it was then necessary to establish whether a substantial part of the Red Berry design had been copied. A simple comparison of the works by HHJ Hacon left little doubt that the design was copied in substantial part.
Admissibility of late evidence
In this case, late applications from both Bodo Sperlein and Sabichi were successfully made to introduce further evidence on the first morning of the trial. However, HHJ Hacon stated that only on rare occasions will such applications be allowed in IPEC. The Judge highlighted some important considerations to keep in mind when determining whether to allow late evidence. These included:
Deductible expenses from an account of profits
In this case, Bodo Sperlein elected for an account of profits, rather than an inquiry as to damages. Questions arose as to whether there should be any deductions from the profit made by the Sabichi Homewares for the sale of the infringing products. The following points need to be considered in relation to any deduction;
The case provides useful guidance as to when an inference of copying will be found and how that inference may be able to be rebutted by a defendant, what factors may assist a late application to admit evidence if it is needed, and when an account of profits is calculated, what overheads may be deducted from those profits.
If you have any questions relating to copyright law or any other intellectual property matter, please contact our intellectual property specialists and copyright lawyers at Waterfront on 0207 234 0200 or email@example.com.
After three decades of collaboration with the Federation Internationale de Football Association (“Fifa”), Electronic Arts Inc. (“EA”), the company that owns EA Sports, has told fans that it will no longer produce its world-famous football video game under the name “FIFA”. It now plans to release a game…
“Muzmatch” is a dating and marriage app that provides Muslims with the means to find a marriage partner online in a way that is compatible with Islamic values. Match Group recently brought proceedings against Muzmatch for trade mark infringement and passing off. It relied on a number of…
This case review from our trade mark expert, Maria-Elena Cacace, highlights the pitfall of failing to do a thorough trade mark clearance search and then being clobbered several years down the line by a major brand owner. On 16 February 2022, Hacon HHJ handed down judgment for a…