Shantell Martin & Anor v Bodegas San Huberto SA & Ors

Copyright infringement of an artistic work is assessed qualitatively. The question is whether the allegedly copied material contains elements expressing the author’s intellectual creation. Side-by-side comparison is central, particularly for artistic works; abstract similarities or commonplace features such as lines, loops, dots, birds and suns are insufficient. Passing off requires goodwill, misrepresentation and damage. An artist’s goodwill may subsist in the recognisable characteristics of the artist’s overall work, including where the work is commercially endorsed. In joint tortfeasorship, a person who has not committed the primary tort must have actual or constructive knowledge of the essential facts making the act tortious. In the IPEC, parties should not ordinarily introduce issues outside the court-approved List of Issues without permission.

The claim concerned copyright infringement and passing off arising from three wine labels used on products imported into the United Kingdom. Found the Found LLC, the assignee of copyright in a wall drawing created by Shantell Martin, claimed copyright infringement. Ms Martin personally claimed infringement of her moral right to be identified as author and passing off based on alleged false endorsement.

The trial proceeded against the Argentine producer, Bodegas San Huberto SA, and the United Kingdom importer and distributor, GM Drinks Limited, together with its director, Marc Patch. The court determined that the First Label copied a substantial part of the Work, but that the Second and Third Labels did not. It also considered whether the products were falsely represented as endorsed by Ms Martin and whether the defendants were joint tortfeasors.

1. Disposition. GM Drinks was liable to Found the Found under Copyright, Designs and Patents Act 1988 section 18 for issuing First Label products to the public. Liability under sections 22, 23(a) and 23(b) arose only for products dealt with shortly after 13 April 2020, when GM Drinks knew or had reason to believe that the label was infringing. There was no liability for the Second or Third Labels. BSH and Mr Patch were not primarily liable, but were joint tortfeasors with GM Drinks for the relevant post-notification copyright infringement.
2. The First Label was clearly a modified copy of part of the Work and reproduced a substantial part because it took features expressing the originality of the Work. The court applied a qualitative assessment focused on the author’s intellectual creation. The Second and Third Labels were sufficiently different. Their common features were elements of the general language of drawing, not Ms Martin’s particular expression. Over-lawyered feature analyses were unhelpful; the court should compare the works as they look.
3. Ms Martin had United Kingdom goodwill in her artistic work and endorsement activities. The First Label misrepresented that the products were connected with or endorsed by her, and damage followed. The Second and Third Labels lacked prominent features of her goodwill, including humanoid faces, absence of perspective and a map-like or patchwork quality, and did not constitute passing off.
4. The court applied the knowledge requirement for accessory liability stated in Lifestyle Equities. Knowledge of reputation alone was insufficient to establish knowledge of the essential facts of passing off. The claim for joint tortfeasorship in passing off therefore failed.
5. Moral-rights infringement and flagrancy damages were outside the List of Issues and were not determined. The judge nevertheless indicated that the moral-rights claim would have succeeded, but that additional damages would not have been just, effective, proportionate or dissuasive.