Islestarr Holdings Ltd v Aldi Stores Ltd

For summary judgment in a copyright claim, the court asks whether the defence has a realistic, rather than fanciful, prospect of success and must avoid a mini-trial. It may decide a short point of law where the evidence is sufficient and the parties have had a proper opportunity to address it.

Copyright may subsist in an artistic design recorded in drawings and reproduced in a transient or three-dimensional medium. Originality requires the author’s own intellectual creation, not novelty or inventive merit. For infringement, the court identifies the allegedly copied features, compares the works, considers access, and asks whether the features taken constitute a substantial part by quality as well as quantity. Differences do not answer the copying question where the relevant similarities indicate derivation.

Islestarr claimed copyright in the Starburst Design on the lid of its Filmstar Palette and the Powder Design embossed into the powders. It alleged that Aldi’s first and second palettes reproduced substantial parts of those works.

Islestarr applied for summary judgment on liability and for permission to re-amend its particulars of claim to clarify the works and plead a later assignment of intellectual property rights. Aldi disputed copyright subsistence, title, originality, copying and substantiality, and argued that the evidence required a trial.

The court therefore had to decide the amendment and evidence issues, whether Islestarr had established title and copyright subsistence, whether Aldi’s designs copied substantial parts of the works, and whether any other compelling reason required a trial.

1. Amendment and evidence. Permission was granted for the re-amendment. Aldi had possessed the reply evidence and the second assignment for a substantial period and had not applied to answer or exclude it. Aldi was therefore not ambushed.
2. Summary judgment test. The court applied the principles in EasyAir Ltd trading as Open Air v Opal Telecom Ltd [2009] EWHC 334 (Ch), confirmed in AC Ward and Son v Kaplan 5 Ltd [2009] EWCA Civ 1098. Aldi’s defence had to show a realistic prospect of success or another compelling reason for trial. The court was not to conduct a mini-trial, but could decide a short legal issue where the evidence and argument were sufficient.
3. Subsistence and fixation. The Powder Design was an artistic work recorded in the drawings annexed to the particulars. Its reproduction by debossing the design into powder did not prevent copyright protection merely because the powder would eventually be rubbed away. The design was a three-dimensional reproduction of a two-dimensional drawing. The court rejected the submission that the use of single words prevented protection of the overall artistic work.
4. Title and originality. On the balance of probabilities, Houston was employed by Islestarr, Wojcik was employed by Made Thought, and Made Thought had validly transferred its rights by the assignments. No manufacturer acquired joint authorship rights. Both designs reflected the authors’ own intellectual choices. Art deco motifs and generic ideas were not protected, but the completed designs were original and copyright subsisted in them.
5. Infringement. Applying Designers Guild Ltd v Russell Williams (Textiles) Ltd [2001] FSR 11, the court compared the particular similarities relied upon, considered Aldi’s admitted prior access, and found the similarities sufficiently close, numerous and extensive to shift the evidential burden. The copied features constituted substantial parts of the works in both qualitative and quantitative terms. Aldi’s evidence and draft defence did not rebut the inference of copying.
6. Other compelling reason. Flagrancy and the need for oral evidence did not require a trial. Flagrancy did not determine originality or substantiality, and did not trump the conclusion that Aldi had no real prospect of successfully defending the infringement claim. Summary judgment was therefore granted on copyright infringement of both designs. Islestarr abandoned its secondary-infringement claims. Costs and the precise form of order were left for further submissions.