T & A Textiles and Hosiery Ltd v Hala Textile UK Ltd & Ors

Copyright infringement requires copying of the copyright work or a substantial part of it. Similarity and access may establish a prima facie inference of copying, but that inference may be rebutted by credible evidence of independent creation or prior manufacture. Secondary infringement also requires knowledge or constructive knowledge that the article is an infringing copy.

For registered-design threats, whether a communication is a threat is judged objectively, particularly by its initial impression on a reasonable recipient. A communication referring to court proceedings, a registered design and removal of allegedly infringing goods may constitute a threat. A registered design that was made available to the public before the relevant date is invalid.

The claimant alleged copyright infringement in eleven bed-linen designs and infringement of a United Kingdom registered design for packaging. The defendants counterclaimed for invalidity of the registered design and for unjustified threats of registered-design proceedings.

The principal copyright evidence concerned the Chantilly and Manhatten designs. The defendants relied on evidence that their products had been imported before the claimant’s asserted creation dates. The court also considered threats made to traders and communications sent through eBay’s VeRO system.

1. Copyright. The court accepted that the claimant owned copyright in the relevant works. The Manhatten drawing was not original because it reproduced an image from a photolibrary without identified additions or modifications. The Chantilly drawing was original because the claimant’s additions and modifications involved an act of intellectual creation. The other pleaded drawings were also treated as original on the evidence.
2. For copying, the court adopted the structured approach summarised in John Kaldor Fabricmaker UK v Lee Ann Fashions [2015] ECDR 2. The claimant must first establish a prima facie inference of direct or indirect copying from similarities. Commonplace similarities carry little or no weight. If copying is established, the court must separately assess whether a substantial part of the copyright work was copied.
3. The defendants’ evidence that the alleged infringing products had been imported into the United Kingdom before the claimant created the corresponding designs was accepted. The allegation of copying therefore failed, and the copyright claim failed without the need to decide knowledge under sections 22 and 23 of the Copyright Designs and Patents Act 1988.
4. Registered design. The evidence established that the defendants’ packaging had been used before March 2009. The registered design was therefore invalid.
5. Joint liability. The third defendant had ceased to be a director before the relevant period and there was no evidence of personal involvement in any infringing activity. He would not have been liable as a joint tortfeasor even if liability had been established.
6. Threats. The objective test applied. The letters sent to Designer Textiles, Nice Carpets and the other identified traders were threats under section 26(1) of the Registered Designs Act 1949, and were unjustified because the registration was invalid. The original eBay notice, at most, threatened copyright proceedings and was not actionable under section 26(1). The subsequent solicitors’ letter was a clear registered-design threat because it referred to the registered design, existing court proceedings and removal of the sellers’ listings.
7. The copyright claim was dismissed. The registered design was invalid. The threats counterclaim succeeded in relation to the trader letters and the later eBay letter, but not because of the original eBay notice.