October 30, 2019

Facts

The claimant, Islestarr Holdings Ltd is the manufacturer and supplier of cosmetic products under the “Charlotte Tilbury” brand. Islestarr sought summary judgment in respect of its claims for copyright infringement against the defendant, Aldi Stores Ltd, in relation to designs applied to two makeup powder pallets.

Islestarr claimed that Aldi had infringed its “Starburst Design”, which decorated the lid of the makeup powder package containing two powders, and its “Powder Design”, which was embossed into the powder. Islestarr’s product was sold under the Charlotte Tilbury brand, which Islestarr launched in 2013.

Images of the party’s products are shown below:

Decision

Deputy Master Linwood was not persuaded by Aldi’s argument that copyright could not subsist in the powder design as it was ‘ephemeral’ in nature, in the sense that it would be rubbed away by use of the powder. In the Deputy Master’s Linwood’s view, if the design embossed into the powder could not be subject to copyright protection, then other artistic works, such as sand sculptures or a bespoke wedding cake, would also not enjoy copyright protection. That would mean that any photograph or drawing of the sculpture or cake would also not enjoy copyright protection. In this case, the Deputy Master said that the powder was a three-dimensional reproduction of a two-dimensional drawing of it.

As for originality, the Deputy Master noted that the Starburst Design on the packaging lid consisted of three elements: (i) the diamond and seam motif; (ii) the “Charlotte Tilbury” monogram within the diamond; and (iii) the sunrays emanating from the diamond. The powder design consisted of the sunray element, with the words “sculpt” and “highlight” embossed into the powder.

Aldi argued that both designs drew heavily from the art deco era and they were therefore not original. Aldi cited various other items of prior art, such as cigarette cases, incorporating faceted surface treatment, raised central diamond devices and sunrays emanating from the centre, designed and manufactured between 1899 and 1960.

However, the Deputy Master agreed with Islestarr that, although its designs were inspired by art deco and there is no copyright in such generic ideas, it was wrong to dissect the designs into individual elements found in art deco ray motifs generally because they both required some form of innovation in order to create them. When each design was looked at as a whole there was no element of “slavish copying” from any of the prior art designs that could be said to be identical.

Further, Islestarr’s evidence of design development showed intellectual creation by the designers. Therefore the Deputy Master found that both designs were original and that copyright subsisted in each.

In terms of infringement, the Deputy Master found that the similarities identified between Aldi’s products and Islestarr’s designs were not merely matters of design that were commonplace, unoriginal or general ideas. The similarities were substantial, both from a quantitative as well as a qualitative perspective. Further, Aldi admitted that its designers were, at the relevant time, aware of Islestarr’s works and had prior access to them, and in the circumstances it failed to discharge the burden that its designs had not been the result of copying Islestarr’s designs.

Accordingly, the Deputy Master found that Aldi had no real prospect of successfully defending the claims.

As for whether there was any other compelling reason for a trial, Aldi agreed that flagrancy went to the whole merit of its case in that the state of mind of those at Aldi responsible for the allegedly infringing designs required examination of what they had before them and what they intended to do. This, Aldi said, went to what is protectable, which went to the very core of substantiality, which in turn depended on originality. All of this required oral examination of witnesses. The Deputy Master rejected this, preferring Islestarr’s argument that there was no connection between originality and flagrancy, as there was no connection between the state of mind of Aldi’s employees who copied, and originality in the design, originality being relevant to when the designs were created. The issue of flagrancy did not trump the finding that Aldi had no real prospect of successfully defending the claim.

The application for summary judgment was granted. (Islestarr Holdings Ltd v Aldi Stores Ltd [2019] EWHC 1473 (Ch) — to read the judgment in full, click here).