Madine (t/a Nico) & Anor v Phillips (t/a Leanne Alexandra) & ors

UK unregistered design right requires an original design embodied in the whole or part of an article. A claim cannot concern arbitrarily selected disembodied features. Primary infringement requires both copying and making an article exactly or substantially to the protected design. Substantial similarity, particularly when combined with access to the design, may support an inference of copying.

Joint tortfeasorship requires more than knowing assistance or facilitation. The alleged joint tortfeasor must have been sufficiently involved in the infringement, such as through inducement or a common design. Authorisation of infringement requires granting or purporting to grant the right to carry out the infringing act; mere enablement, assistance or encouragement is insufficient.

The claim concerned alleged infringement of UK unregistered design right in designs for wedding dresses. The First Claimant relied on the Fan Dress design and two sets of sketches for a variant known as the Chenise Dress.

The First Defendant made a wedding dress for a former customer and supplied photographs of it for use in china figurines. The Second Defendant, her mother and former employee of the First Claimant, was alleged to be jointly liable. The issues included subsistence and ownership of design right, copying, substantial reproduction, authorisation, and joint tortfeasorship.

1. Subsistence and originality. The Fan Dress design, comprising the skirt portion of the dress, was a legitimate design of part of an article and was not an arbitrary selection of disembodied features. Design right subsisted in it. Design right also subsisted in the earlier Chenise sketch, at least in its bodice element, because the changes to the Fan Dress were sufficiently significant. The later Chenise sketches were original and pre-dated the Defendant’s Dress.
2. The amendment to section 213(2) of the Copyright, Patents and Designs Act 1998 did not affect the designs in issue. The designs related to the whole or a part of the dress, rather than disembodied features. The amendment did not extinguish accrued rights of action for earlier infringements and applied to later acts.
3. Copying and substantial reproduction. Under section 226, the claimant had to establish copying and that the articles were made exactly or substantially to the design. The substantial similarities between the Fan Dress and the Defendant’s Dress, combined with the Defendants’ familiarity with the design and the customer’s request for a version of it, established deliberate copying. The Defendant’s Dress reproduced the most significant features of the Fan Dress and was made substantially to that design.
4. The Defendant’s Dress was also indirectly copied from the Chenise sketches and infringed the design right in the later sketches. The Crystal Figurines were indirect copies because the Defendant’s Dress, itself infringing, was supplied for their manufacture.
5. Secondary liability. Mere assistance or facilitation did not establish joint tortfeasorship. There was no sufficient evidence that the Second Defendant shared a common design or concerted action to secure the making of the infringing dress. Her liability was therefore not established.
6. The First Defendant authorised manufacture of the Crystal Figurines under sections 226(1) and 226(3). She supplied photographs specifically for manufacture and retained contractual control over aspects of the figurines. This went beyond mere enablement. The claim succeeded against the First Defendant but failed against the Second Defendant.

First-instance decision. The judgment states that certain claims against other defendants and all questions of quantum were stayed or reserved.