As many people remember from their school days, it is much better to create something on your own than to copy someone else’s work. But where do you stand when matters are not so clear cut, when there are elements of grey, when you suspect that someone has copied your work but knowingly or unfairly altered various aspects or when you have been accused of copyright infringement in relation to a work that you hadn’t seen before?

If faced with such scenarios, allegations of copyright infringement are unlikely to be far away. You may wish to protect and enforce your rights or defend your position. If so, you may want an understanding of how the Courts are likely to approach the question of copyright infringement.

The recent case of John Kaldor Fabricmaker UK Limited -v- Lee Ann Fashions Limited is not a bad place to remind yourself of the main elements involved in copyright infringement. Heard in the High Court’s Intellectual Property Enterprise Court, the parties were commended by the Court for their sensible approach to the dispute which meant that it could focus on the key issues in order to provide an important summary of the law, including previous authorities, and to explain how it would, as a result, apply it when copyright infringement is alleged, without getting drowned in extraneous detail.

The legal background
In the UK, the law surrounding the question of copyright infringement stems from the Copyright, Designs and Patents Act 1988 (also known as the CPDA). Under the CPDA, original literary, dramatic, musical and artistic works may be protected by UK copyright for the life of the author plus seventy (70) years. During that period, the copying (which under the CPDA means reproducing the work in any material form) of the protected work is prohibited without permission.

What are literary, dramatic, musical and artistic works?
An original literary work is normally formed of the written word (whether online or in print) such as marketing literature, a novel, an article or correspondence. An original dramatic work is typically a work of action with or without words or music which can be performed – examples include screenplays, dances and mimes.
An original musical work is a work that consists exclusively of music, and has been defined by the Courts as the combination of sounds for listening to and which are not mere noise but created for human emotions or intellect. An original artistic work is defined by the CPDA as a graphic work, photograph, sculpture, collage or a work of architecture or artistic craftsmanship, and it can be used to protect diagrams, charts, graphic design materials, design drawings and engineering drawings amongst others.

The John Kaldor case
Both John Kaldor and Lee Ann are in the fashion business, and both design and make fabrics for sale to various retailers. The dispute in this particular case concerned a fabric which Lee Ann had supplied to Marks & Spencer and which John Kaldor claimed had been copied from its own earlier fabric which Lee Ann had seen. At the trial of the case, there was no dispute that John Kaldor held the necessary (artistic) copyright in its fabric, so the question for the Court was whether it had been infringed by Lee Ann’s subsequent fabric.

Primary and secondary infringement
In the case, John Kaldor alleged the two forms of infringement against Lee Ann – primary and secondary infringement. Primary infringement occurs when (for example) an individual copies the protected work without permission. Secondary infringement targets the importing, distributing and selling of infringing copies by individuals. Liability for secondary infringement will ordinarily only occur once the individual has knowledge of or reason to believe that the copies are infringing and is often alleged against the primary infringer once he or she has been put on notice of the infringement allegation.

Copyright infringement
Under the CPDA, for the Court to find there was infringement, it has to be satisfied (i) that the alleged copy was in fact copied, directly or indirectly, from the protected work and (ii) that the copying was done in relation to the whole or a substantial part of the protected work.

Was it copied, directly or indirectly, from the protected work?
In relation to the first part, the Court does not expect there to be bullet-proof evidence of copying as it is unlikely to exist. Instead, the Court accepts that it has to rely on the similarities between the works and whether they are significant enough on their face to infer that copying did indeed take place. This inference can, however, be defeated by evidence which shows that the accused work was created without reference to the previous work. The Court said that it follows from this that the stronger the similarities and therefore the inference of copying, the stronger the evidence needs to be to defeat it. Likewise, where the inference is weak, weaker evidence will suffice to defeat it.

Was the copying done in relation to the whole or a substantial part of the protected work?
Once the first part of the infringement question is satisfied, attention must turn to the second limb which says that the copying must be done in relation to the whole or a substantial part of the work. The issue for the Court here is whether the elements found to have been copied form a substantial part of the protected work.

Where the whole of a work has been copied the issue will be straightforward. The tougher examination is when less than the whole has been copied. The Court sees two types of what may be termed ‘part copying’. The first type is where a part of the whole work has been exactly copied. The question for the first type is whether that part is a substantial part, and that will depend more on the quality of what has been copied than on the quantity. The second type is where none of the work has been exactly copied and it has instead been modified. This is referred to as altered copying. The question for altered copying is whether a substantial part of the original independent skill and labour has been incorporated into the latter work. The similarities between the works will be critical and determinative, according to the Court, for altered copying.

The Court has, however, said that once copying is established (the first part) it is very likely that the substantial element will follow (the second part) as where the similarities are “sufficiently numerous or extensive to justify an inference of copying they are likely to be sufficiently substantial”. Indeed, the Court has gone further and suggested that where the similarities justify the inference of copying there will be no need to consider the substantiality issue and infringement will be found.

The Court’s summary
From its review of the law and authorities on copyright infringement, the Court drew the following principles:

  1. There needs on the face of it to be an inference of direct or indirect copying due to the similarities between the works.
  2. Similarities which have no connection to the literary, dramatic, musical or artistic nature of the work are disregarded.
  3. Similarities which are commonplace give little or no inference of copying. Or in other words, the more original the similarity, the stronger the inference of copying.
  4. The inference of copying can be defeated by evidence of independent creation. The stronger the inference, the stronger the evidence needed.
  5. No copying will mean no infringement. But if there has been copying, to be infringing, it needs to have been done in relation to the whole or a substantial part of the original work.
  6. There are two approaches to substantial part. The first is to decide whether the similarities establish a substantial part of the original work. The second, which applies to altered copying, is whether a substantial part of the original intellectual creation has been incorporated.
  7. Commonplace similarities do not count in the substantial part test.
  8. Where copying is found, it will regularly lead to the substantial part test being satisfied. But this is likely to be influenced by the strength or weakness of the similarities.

Did Lee Ann infringe John Kaldor’s copyright?
So what about John Kaldor and Lee Ann?
The Court carefully reviewed the two fabrics and came to the view that the similarities between them meant that Lee Ann had, on the face of it, copied John Kaldor’s design. The Court also said that while there was enough similarity to infer copying, it was not a particularly strong inference. On the face of it, therefore, Lee Ann was liable for copyright infringement.

However, the Court found that the evidence put forward by Lee Ann that their fabric was created independently of the John Kaldor fabric was credible and thus defeated the inference of copying. The Court did hint that had the similarities between the fabrics been greater, it might have found for John Kaldor. As a result of failing the first limb of the infringement test, the Court did not have to go on and consider whether the copy was a substantial part.

While the case provides a useful summary of the law which will apply in a copyright infringement case, two factors stand out:

  1. how critical the degree of similarity between the two works will be in a copyright infringement dispute; and
  2. how important the record of a work’s creation will be to the chances of rebutting a presumption of copying.

By Harry Jupp