Sonia Edwards v Boohoo.com UK Limited & Ors

Unregistered design right protects the physical shape or configuration of a whole or part of an article, not an abstract design concept, construction method, material, surface decoration or features materially dependent on the wearer. A claimant may identify an unrecorded design by contemporaneous images of an article, but a broad definition may weaken originality and make independent creation more probable. The 2014 amendment to the Copyright, Designs and Patents Act 1988 prevents claimants from selecting disembodied features as a design. Similarity does not establish copying where independent creation is more probable. For secondary infringement, “reason to believe” requires facts from which a reasonable person would arrive at the relevant belief, allowing time for evaluation.

Sonia Edwards claimed unregistered design right in five clothing designs: a multiway bikini top, a puff-sleeved top, two ruched skirts and ruched leggings. She alleged that companies in the boohoo group had copied and infringed those designs. The trial was confined to liability.

The court considered subsistence, originality, the effect of the 2014 amendment to the Copyright, Designs and Patents Act 1988, copying, substantial similarity, primary infringement and secondary infringement. The central questions were whether design right subsisted in the pleaded features, whether the defendants had copied the designs, and whether the alleged articles were made exactly or substantially to them.

The claim was dismissed in its entirety.

1. Design 1. The 2016 bikini configuration did not constitute a fresh design. The relevant strap arrangement was already shown in the 2011 design, and the difference in the position of the tie was insufficiently original and protectable. The pleaded alternatives were methods or principles of construction or concerned the wearer’s positioning of the garment. The court also warned against “evergreening” by shifting the creation date to avoid expiry.
2. General principles. Under s.213 of the Copyright, Designs and Patents Act 1988, the design must be an embodied physical manifestation. Features dependent on the wearer’s body, the material used, concealed or absent features, and abstract concepts were excluded. Surface decoration was distinct from three-dimensional ruching. The amendment made by s.1 of the Intellectual Property Act 2014 applied to post-amendment infringements of earlier designs and prevented reliance on disembodied selected features.
3. Designs 2 to 5. After excluding impermissibly defined features, Designs 2 to 5 retained sufficient originality, although Designs 2 and 5 were borderline. The pleaded Design 2 article was not made exactly or substantially to the surviving design because its cuff was materially shorter. The ruched skirts and leggings would have satisfied the substantial-similarity requirement if the other elements had been established.
4. Copying. No design had been copied. The judge considered the limited opportunity for access, the age and low reach of the claimant’s social-media publications, the generic or low-originality nature of the surviving designs, the limited design space for clothing fitting the human body, and the probability of independent creation. The absence of documents caused by routine deletion did not justify adverse findings.
5. Infringing acts. Had copying and the other elements been proved, design documents made in the United Kingdom would have supported primary infringement for Designs 1, 3, 4 and 5. For secondary infringement, the required knowledge or reason to believe arose only 14 days after service of the perfected Amended Particulars of Claim, on 4 May 2023. Those alternative findings did not alter the dismissal.