Per Una or not for one supplier

December 5, 2014

Copyright in fabric patterns: how record keeping saved the day!

It is well known that a designer should keep a record of his drawings to prove ownership of a copyright work. This is often used to enforce copyright against an infringer. However, the same records can also be very useful to defend a claim of copying as two design houses found in Court last week when one claimed the other had copied its fabric.

Lee Ann Fashions Limited designs clothing. It was approached by Marks & Spencer in August 2012 to pitch fabrics for a new garment in M&S’s Spring/Summer 2013 Per Una collection.

Lee Ann offered a number of samples. One of them, the JK Fabric, came from John Kaldor Fabricmaker UK Limited.

Lee Ann supplied Marks & Spencer, but the JK Fabric was not chosen.

Roll the clock forward a few months and John Kaldor noticed a dress sold in the Per Una collection that looked similar to its fabric sample. It then sued Lee Ann for copyright and Community unregistered design right infringement.

  

Inference of Copying

To win on copyright infringement, John Kaldor needed to show that Lee Ann had copied a whole or substantial part of the JK Fabric. When two items are closely similar, the Court is much more likely to infer copying. It is then for the accused infringer to show evidence of its creation to rebut that presumption.

The Court considered that the patterns were not so similar as to create a strong inference of copying, although the Judge did nevertheless think that the fabrics were similar enough to find some inference.

Furthermore, John Kaldor recalled having had a telephone conversation with someone at Lee Ann who admitted to having “re-worked” the JK Fabric. This could have been quite persuasive, but Lee Ann denied it and John Kaldor had no evidence to offer the court. Without this, the Judge did not rely on this point.

The Lee Ann designer had, however, archived records of her print creations and was able to recount how she independently created the design by referring to the records she had kept. On this basis, the Judge was persuaded by Lee Ann and found that the JK Fabric had not been copied.

 

How did Marks & Spencer protect itself?

Marks & Spencer was not a party to the proceedings. It is not known why. There are two reasons why Marks & Spencer may not have been a party:

  1. To bring a successful claim, John Kaldor needed to show that the infringer knew or ought to have known that the garment infringed copyright. This was probably easier to argue against Lee Ann than it would have been against Marks & Spencer, which played only a small part in the design process.

  2. Marks & Spencer may have enjoyed the benefit of an indemnity from Lee Ann in its supply contract for any claims arising out of, or in relation to, the supply of the clothing. This straightforward provision would have ensured that, if Marks & Spencer was to be dragged into the dispute, it would not have been left to pay up.

 


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