ATB Sales Ltd v Rich Energy Ltd & Anor

Copyright infringement may be established where substantial similarity and a sufficient possibility of access give rise to a strong prima facie inference of copying. The defendant must then satisfy the court that the similarity resulted from coincidence or independent creation. A claimant need not prove facsimile copying: a part is substantial where it contains elements expressing the author’s intellectual creation. Credibility remains for the court to assess, even where dishonesty has not been pleaded, provided the relevant facts are pleaded and the allegation is put to the witness. A person is a joint tortfeasor where they actively co-operate in, and intend to bring about, the primary tortious act, subject to a more-than-de-minimis contribution.

The claimant, a bicycle designer and manufacturer trading as Whytes Bikes, owned copyright in an original stag-head device. The defendants used a closely similar stag-head device for the Rich Energy brand and its associated marketing, including Formula 1 sponsorship. The claimant alleged copying, infringement under the Copyright, Designs and Patents Act 1988, joint tortfeasance by the individual and design-company defendants, and invalidity of the defendants’ registered trade mark under the Trade Marks Act 1994.

The defendants denied copying and relied on independent creation. The surviving issues were whether copying occurred, whether the whole or a substantial part had been reproduced, and whether the second and third defendants were jointly liable.

1. Copying. Applying Designers Guild v Russell Williams Textiles [2000] 1 WLR 2416, the court first compared the devices visually and assessed whether the similarities were sufficiently close, numerous and extensive to be more likely to result from copying than coincidence. The unusual proportions, antler placement and highly reduced stylisation created a strong prima facie inference of copying. The claimant’s device had been available online, and the defendants had undertaken extensive searches for stag-head logos.
2. The defendants’ evidence of independent creation was unreliable. The court was entitled to assess credibility and reliability at trial even though dishonesty had not been pleaded. The pleaded case of copying supplied the facts from which dishonesty might be inferred, and the issue was properly put to the witnesses. Later-manufactured documents, manipulated sketches, false vector lines and contradictory evidence materially undermined the defence.
3. Substantial part. Sections 16(3) and 17 of the Copyright Designs and Patents Act 1988 did not require facsimile copying. Following England & Wales Cricket Board v Tixdaq [2016] EWHC 575 (Ch) and the principle identified in Infopaq International A/S v Danske Dagblades Forening Case-5/08, protection extends to parts containing elements expressing the author’s intellectual creation. The copied similarities went beyond general ideas and amounted to the whole, or alternatively a substantial part, of the claimant’s device.
4. Joint tortfeasance. Applying the common-design test stated in Fish & Fish Ltd v Sea Shepherd UK [2015] UKSC 10 and summarised in Vertical Leisure v Poleplus Limited [2015] EWHC 841 (IPEC), Mr Storey and Staxoweb actively co-operated in and intended the copying. Their contribution was more than de minimis. They were therefore jointly liable for the infringement.
5. The claim succeeded. The claimant was entitled to injunctive relief, damages or an account of profits at its election, and a declaration that the trade mark was invalid. Consequential matters and costs were adjourned.