On 17 June 2019, the High Court granted Charlotte Tilbury summary judgment for copyright infringement against Aldi following the sale of foundation powder palettes using patterns substantially similar to those used by Charlotte Tilbury in Islestarr Holdings Ltd v Aldi Stores Ltd.

In this decision the Judge found that the patterns on the lid of a make-up powder palette and embossed on the powder itself could constitute protectable copyright works.

In this alert, we summarise some of the key elements of the decision and the potential impact it could have going forward.

Key points

This decision raises the following topics:

  • Can non-permanent elements, such as the pattern embossed in a make-up palette, benefit from copyright protection despite the fact that the work will disappear during consumer use of the product?
  • Is a copyright infringement claim a stronger route to pursue imitators or look-alike products than passing off?

Background

Islestarr, the owner of the Charlotte Tilbury brand, became aware of the design of Aldi’s look-alike make-up powder at a trade show. After discovering that the lid of Aldi’s palette was also similar, the company brought a copyright infringement claim based on the two patterns, i.e. the pattern of the powder and the one of palette as a whole.

Fixation and Copyright

Deputy Master Linwood considered whether copyright could subsist in the design embossed into the powder, which would disappear following use of the product. He dismissed Aldi’s argument that the ephemerality of the powder design meant that it was not sufficiently fixed to be granted copyright protection. He used the example of the copyright protection granted to sand sculptures that are washed away by the tide. Equally, a personalised wedding cake that will be eaten can still constitute a copyright work.

Therefore, even if the design in the powders disappears by being rubbed away by the user, this does not affect or remove the copyright protection, as “the powders are a three-dimensional reproduction of the two-dimensional object, namely the drawing”.

Requirement of originality - Powder design

To qualify for copyright protection, a work must be "original", which means that the author must have used his own intellectual creation or independent skill and effort rather than copied from other works.

In this case, the main creator of the works took inspiration from the art deco era. The judge held that the works as a whole were original as there was no element of "slavish copying" in their creation. The Court found that each pattern was original and that copyright subsisted.

Infringement - Reproduction of a substantial part of the copyright works

The Court made a visual comparison of the two patterns noting the similarities and the differences in order to determine whether the similarities were sufficiently close, numerous or extensive so that it is the result of copying rather than of coincidence. In this case, the Court found that the similarities between the designs were quantitatively and qualitatively substantial. Furthermore, Aldi admitted that its designers were aware of Charlotte Tilbury’s patterns when Aldi’s patterns were created.

Practical implications

This case is an interesting case where copyright was successfully relied on to prevent the sale of look-alike products.

While passing off actions require a substantial amount of evidence of goodwill, copyright infringement claims in simple "artistic works" (such as the appearance of a product, logo or packaging) may allow companies to pursue summary judgment or interim injunctions without having to demonstrate challenging factual points such as goodwill and misrepresentation. A copyright infringement claim has the potential to be a simpler route if it can be inferred that the original pattern was copied.

Furthermore, "artistic works", and in this case the pattern embossed on a make-up powder, does not have to be permanent to benefit from copyright protection. Companies will therefore be in a better position to claim protection for the non-permanent artistic elements incorporated in their products,

This decision was under the Shorter Trial Scheme in the High Court, which allows for a speedy trial but does not impose a cap on costs recovery from the losing party (unlike IPEC where recoverable costs are capped at £50,000).

Finally, compared with a design right claim where even a minor modification of the design could be sufficient to avoid infringement if it results in a different overall impression, a copyright claim may still succeed as long as a substantial part of the original work is reproduced in the look-alike product (even if the overall impression has changed).

The full decision can be found here: Islestarr Holdings Ltd v Aldi Stores Ltd [2019] EWHC 1473 (Ch).

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