Bodo Sperlein Ltd v Sabichi Ltd & Anor

Copyright infringement may be inferred from striking similarities between the claimant’s work and the defendant’s design. The stronger the prima facie inference, the more compelling the evidence of independent design must be. Once copying is established, copying in substantial part will usually follow, subject to comparing the original work with the alleged infringement at the two ends of any copying chain. An account of profits is equitable relief, but it will not ordinarily be refused where the infringer knew or had reason to believe that the goods were infringing. Only costs incurred solely because of the infringement, or allowable additional overheads or displaced-business overheads, may be deducted from gross profits. The evidential burden rests on the infringer.

The claimant owned copyright in a ceramic tableware design known as Red Berry. The defendants created, imported and sold a similar Red Blossom collection. The claimant alleged that the defendants had copied its design and had committed primary and secondary copyright infringement.

The court considered whether copying had occurred at either of two stages, whether the copying was of a substantial part, whether the defendants had the requisite knowledge for secondary infringement, whether an account of profits should be ordered, and what deductions were permissible in calculating that account.

1. Copying. The court treated the similarities between the Red Berry and Red Blossom designs as striking. The identical shade of red was particularly significant. The defendants’ evidence did not provide a convincing independent explanation, so the prima facie inference of copying was not rebutted. Copying could have occurred when the earlier Twiggy design was created or when it was later amended. It was unnecessary to determine the precise stage because the end-to-end similarity established indirect copying.
2. Substantial part. The comparison required was between the original Red Berry copyright work and the Red Blossom design, not merely between successive intermediate designs. The court found that the Red Berry design had been copied in substantial part.
3. Secondary infringement and remedy. Importation and sale required knowledge or reason to believe under sections 22 and 23 of the Copyright, Designs and Patents Act 1988. That requirement was satisfied because the defendants’ controlling mind knew of the relevant copying and knew that copyright was likely to subsist. An account of profits was equitable relief, but there was no basis for treating the defendants as entirely innocent infringers or refusing the remedy.
4. Quantum. Applying the principles summarised in Hollister Incorporated v Medik Ostomy Supplies Limited and OOO Abbott v Design & Display Limited, solely attributable costs could be deducted. General overheads could be deducted only if increased by the infringement or if the infringement displaced another business and the relevant overheads would have supported that business. The defendants failed to prove such deductions, apart from import duty of £4,089.38.
5. The defendants’ importation and sale infringed copyright. The defendants were jointly liable for the collective profit of £31,703.01, with interest to be determined after submissions.

Not stated in the judgment.