John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions Ltd

Copyright infringement in a design requires proof of copying and copying of the whole work or a substantial part. Similarities may support a prima facie inference of copying, but commonplace features carry little or no weight. The more original and striking the similarities, the stronger the inference. The defendant may rebut that inference with evidence of independent design, and the required cogency of that evidence depends on the strength of the prima facie case.

Substantiality remains a distinct question. In altered-copying cases, the assessment may focus either on the qualitative significance of the similarities in the claimant’s work or on the substantiality of the author’s intellectual creation. Where no copying is established, neither copyright infringement nor the agreed corresponding Community design claim can succeed.

The claimant designed a fabric identified as JK2926 and supplied a sample to the defendant, a garment manufacturer. The defendant later supplied Marks & Spencer with garments made from a different fabric, LA Fabric. The claimant alleged that the defendant had copied the JK Fabric, infringing copyright under the Copyright, Designs and Patents Act 1988, and an unregistered Community design.

Subsistence, ownership and the relevant knowledge requirement were not disputed. The issues were whether the LA Fabric had been copied from the JK Fabric, whether a substantial part had been copied for copyright purposes, and whether the designs produced the same overall impression for an informed user.

1. Copying. The court adopted a staged analysis. First, similarities between the works are assessed to determine the strength of any prima facie possibility of direct or indirect copying. Similarities expressing ideas unrelated to the artistic nature of the work must be disregarded. Commonplace similarities carry little or no weight, whereas strikingly original similarities carry greater weight. A prima facie inference may be rebutted by evidence of independent design; the strength of the evidence required depends on the strength of the inference.
2. Substantial part. If copying is established, the court must separately decide whether the copying concerned the whole work or a substantial part, applying a qualitative rather than quantitative assessment. Designers Guild Ltd v Russell Williams (Textiles) Ltd identified two approaches in altered-copying cases: assessing the substantiality of the similarities in the copyright work, or assessing whether a substantial part of the author’s intellectual creation was incorporated. Commonplace features cannot form part of a substantial part protected by copyright.
3. Application. The similarities between the fabrics established only a prima facie possibility of copying, which was neither strong nor negligible. The defendant’s evidence of independent design was credible. The claimant’s evidence, including evidence concerning telephone conversations and possible access to the JK Fabric, did not establish a strong inference of copying. The court therefore found that the defendant had not copied the JK Fabric.
4. Because no copying was proved, the substantial-part issue did not arise. The parties agreed that the Community design question stood or fell with substantial copying. Both claims were dismissed.

First-instance decision. No appellate history is stated in the judgment.