Charlotte Tilbury has obtained summary judgment for copyright infringement against Aldi Stores Ltd, defending her makeup brand against Aldi’s highly similar, and significantly cheaper, products.

BACKGROUND

Islestarr Holdings launched the Charlotte Tilbury brand in 2013 with the release of The Filmstar Bronze and Glow palette. Endorsed by the likes of Amal Clooney and Meghan Markle, it retails at about £49 and Islestarr had sold £12.9 million of the product, at the time of judgment.

This case concerned two parts of the Filmstar Palette and each part is considered a work over which Islestarr has copyrights.

The first work is the Starburst Design embossed onto the lid of the packaging of the Filmstar Palette. The second is the decorative pattern on the surface of the powders of the Filmstar Palette, named the Powder Design as below.

Taken from [4] of the judgment

Aldi, who use the slogan “like brands only cheaper”, produced two makeup palettes. It marketed just one of the palettes, for between £4.99-£6.99, and had made £140,000 from it at the time of judgment.

COMPLAINT

Islestarr complained of the following similarities between its works and Aldi’s first work:

– Debossed design on surface of powders;

– Rose gold colour packaging;

– Shape of packaging of powders inside;

– Imprinting and position of words on powders including the use of identical word ‘glow’;

– Position of mirror on inside of the lid; and

– The second work has a very similar lid.

COPYRIGHT

Deputy Master Linwood’s judgment at [25-36] contains a useful summary of the relevant law, briefly abridged as follows:

– Copyrights can subsist in original artistic works (s1(1)(a) Copyrights Designs and Patents Act 1988), which include graphic works, irrespective of artistic quality (s4(1)(a) CDPA).

– The works must be original, which is to derive from the maker’s own intellectual creation or independent skill and effort (Infopaq International A/S v Danske Dagblades Forening [2010] FSR 20 [27]).

– Copyrights are infringed by a person who without licence does, or authorises another to, copy, issue copies, communicate to the public, import and distribute the works (ss16-26 CDPA).

– The copyright owner will not complain that a work resembles theirs, but that the defendant has copied it (Designers Guild Ltd v Russell Williams (Textiles Limited)[2001] FSR 11[32]).

– The court will compare the two designs, noting the similarities and the differences, to judge whether the similarities are sufficiently close, numerous or extensive to be more likely to be the result of copying than of coincidence.

– If there is sufficient similarity and the defendant had prior access to the work, it is up to the defendant to prove that they did not copy the work.

– If the defendant cannot prove their case, the judge will ask whether what has been copied is a substantial part of the copyright work, a qualitative assessment of its importance to the copyright work, not the defendant’s work.

THE DECISION

Finding for Islestarr, Deputy Master Linwood remarked at [113] “I find the variant ray motive is part of Islestarr’s Starburst design. The evidential burden has shifted to Aldi and nothing in their draft defence or evidence persuades me that they have discharged that burden […] The similarities I have identified amount to a substantial part of those designs and, accordingly, I find Aldi has no real prospect of successfully defending Islestarr’s claim for copyright infringement of each design”.

COPYRIGHT VS PASSING OFF

This was a copyright action, not a trademark or passing off action. On the face of it, passing off seems to be perfectly suitable. Its requirements are as follows, as collected in the Jif Lemon case (Reckitt & Colman Ltd v Borden Inc[1990] 1 All E.R. 873):

– The goods have acquired goodwill that distinguishes them from competitors;

– The defendant misrepresents their goods, intentionally or unintentionally, so that the public may have the impression that the goods are those of the claimant; and

– The claimant may suffer damages because of the misrepresentation.

However, Islestarr may have learnt from Moroccan Oil Israel limited v Aldi Stores Limited[2014] EWHC 1686, in which Moroccan Oil failed to protect their brand against a similar oil marketed by Aldi, Miracleoil. Judge Hacon believed that customers would think Miracleoil cheeky but would not be confused as to its origin.

This highlights a key difficulty in establishing that this tort has been committed.

That difficulty is primarily one of evidence. Without clear evidence of market-place confusion, a claimant will struggle to defend their brand against knock-off products. Copyright actions, on the other hand, do not require so subjective an assessment, save that which the judge undertakes. And the judge’s view is the only view that really matters, not that of innumerable people from a relevant section of the public.

CAN A SANDCASTLE PROTECTED BY COPYRIGHT

The second thing of interest is Deputy Master Linwood’s comments as to the fixed medium.

Deputy Master Linwood decided a significant point of law in his summary judgment, noting “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. […] The fact that the design in the powders disappears by beingrubbed away by the user, does not, in my judgment, affect or remove the copyright protection to which such an artistic work is entitled” [48].