This recent case provides an interesting insight as to how copyright can successfully be used to prevent the sale of copycat products.
The renowned make-up artist Charlotte Tilbury launched her eponymous beauty and skincare brand in 2013. The collection included a make-up palette which features a distinctive sunburst design on the case and debossed in the powder itself:
The owner of the Charlotte Tilbury brand (Islestarr Holdings Limited) became aware that Aldi was producing a palette with a similarly embossed powder in July 2018 at a trade show. Islestarr subsequently became aware that Aldi's product featured a similar design on its case. Aldi's products are set out below:
Islestarr brought proceedings against Aldi claiming breach of copyright, quoting Aldi's advertising slogan, "Like brands, only cheaper". Islestarr argued that this demonstrated Aldi's ethos of selling lookalike versions of well-known brands cheaply, with a view to encouraging footfall in their stores.
On 17 June 2019, Deputy Master Linwood granted summary judgment to Islestarr finding that Aldi had infringed Islestarr's copyright in the design of the palette and debossed in the powder. (The case was heard in the High Court under the Shorter Trials Scheme.)
It is clear from the images above that the product looks very similar, and Aldi admitted that it was aware of the Charlotte Tilbury packaging and debossed powder at the time that its own product was designed. Deputy Master Linwood found that the similarities were qualitatively and quantitatively substantial, therefore copyright infringement was established.
However, this was not a cut and dried case and there were several interesting issues raised:
- Could copyright subsist in the debossed powder design? Aldi questioned whether it was possible for copyright to subsist in a design which is rubbed away through use. Deputy Master Linwood considered the case law on the subject and concluded that copyright can subsist in artistic works which are temporary in nature. In this case, the powder design was a three-dimensional reproduction of the two-dimensional object, namely the original drawings from which the product was created. He gave examples of sand sculptures (which could be claimed by the tide), wedding cakes (which would be consumed by guests) and ice sculptures (which would melt) as other situations where copyright may subsist in a temporary artistic work.
- Was the artistic work sufficiently original to attract copyright protection? Aldi argued that the designs were generic patterns in the art deco-style, and submitted examples of prior art to support its position. Deputy Master Linwood found that the designs had not been slavishly copied from any prior designs and were therefore sufficiently original.
- Did Islestarr own the copyright in the designs? There was a question mark regarding the ownership of the copyright because the designs had been developed in conjunction with a design company called Made Thought Limited. Some of the evidence was contradictory on this point and Islestarr sought to clarify the matter by executing and submitting an explicit copyright assignment document. Ultimately, Islestarr was able to prove ownership, but this serves as an important reminder to businesses engaging third party designers to ensure that the terms of any agreement clearly state which party owns the copyright in the works created.