Response Clothing Ltd v The Edinburgh Woollen Mill Ltd (Rev 1)

A fabric may qualify as a work of artistic craftsmanship even where it is made using a machine and subsequently mass-produced. The relevant questions are whether the author was both a craftsman and an artist, applying a practical and evidence-based assessment of skill, workmanship, creative ability and aesthetic appeal.

Copyright protection must be interpreted consistently with Directive 2001/29/EC. An original design is protected where it is the author’s own intellectual creation, expressed through free and creative choices. Copying a substantial part involves taking that intellectual creation. In a distribution chain, issuing copies to the public occurs when an independent purchaser first obtains the right to dispose of them. Secondary infringement depends on whether the known facts would lead a reasonable person in the defendant’s position to believe that the articles were infringing copies.

Response supplied ladies’ tops to Edinburgh Woollen Mill Ltd (EWM) using a jacquard fabric incorporating a wave arrangement. After EWM changed suppliers, it obtained similar fabrics from Visage, Cingo and Bengal Knittex and sold tops made from them.

Response claimed copyright in the original fabric as a graphic work or work of artistic craftsmanship. It alleged that the replacement fabrics were infringing copies and that EWM was liable for primary and secondary infringement under the Copyright, Designs and Patents Act 1988.

The principal issues were whether copyright subsisted in the fabric, whether the replacement fabrics copied a substantial part, whether EWM had committed primary infringement by issuing copies to the public, and whether it had reason to believe that the fabrics were infringing copies.

1. Copyright work. The wave fabric was not a graphic work. The statutory examples in section 4(2) of the Copyright, Designs and Patents Act 1988 involved marks made on a substrate and could not be stretched to include fabric itself. The claim therefore depended on the fabric being a work of artistic craftsmanship.
2. Artistic craftsmanship. Adopting the definition in Bonz Group (Pty) Ltd v Cooke [1994] 3 N.Z.L.R. 216, a work required an author who was both a craftsman and an artist. A machine could be used in its creation. The work could have aesthetic appeal because it attracted customers, and later multiple production did not prevent it being a work of artistic craftsmanship. The wave fabric satisfied those requirements.
3. EU conformity and originality. The design was a work within article 2 of Directive 2001/29/EC if original. Applying Levola Hengelo BV v Smilde Foods BV EU:C:2018:899 and Cofemel-Sociedade de Vestuário SA v G-Star Raw CV EU:C:2019:721, originality required the author’s own intellectual creation, expressed through free and creative choices. Under Marleasing SA v La Comercial Internacional de Alimentación SA EU:C:1990:395, section 4(1)(c) was construed consistently with that principle so far as possible. The fabric was original and copyright subsisted in it.
4. Copying. The similarities between the wave fabric and each replacement fabric were sufficient to infer direct or indirect copying. Applying the intellectual-creation approach, each replacement fabric reproduced a substantial part of the copyright work.
5. Primary infringement. The sale by Visage to EWM transferred to EWM the right to dispose of the fabric and realised its economic value. Applying Peak Holding AB v Axolin-Elinor AB EU:C:2004:759, that transaction issued the copies to the public. EWM’s later sales of tops made from the Visage fabric were therefore not primary infringements. EWM accepted primary infringement in relation to the Cingo and Bengal Knittex fabrics.
6. Secondary infringement. The question under section 23 was whether the facts known to EWM would have led a reasonable retailer in its position to believe that the fabrics were infringing copies. Mere suspicion was insufficient. Applying L.A. Gear Inc v Hi-Tech Sports plc [1992] FSR 121 and ZYX Music GmbH v King [1995] FSR 566, the similarities, the supply of samples or specifications, and EWM’s awareness of the absence of comparable fabrics would have led a reasonable person to that belief.
7. Disposition. The Visage, Cingo and Bengal Knittex fabrics were infringing copies. EWM infringed Response’s copyright by selling them as tops, with primary infringement established for the Cingo and Bengal Knittex fabrics and secondary infringement established for all three.