How are design rights and copyright used, in the fashion sector, to protect prints? What is the latest case law on this field? Alexander Rozycki, Barrister, 4-5 Gray’s Inns Square

1.
Kaldor v Lee Ann
How to prove copying
www.4-5.co.uk

2. Background
Facts
• C’s
claim
did
not
succeed
despite
the
very
close
similari5es
and
despite
the
fact
that
C’s
design
had
enabled
D
to
get
the
Marks
&
Spencer
order.
www.4-5.co.uk

3. Legal
Framework
• Sec5on
16
of
the
Copyright
Designs
and
Patents
Act
1988
–
C
must
establish
that
i)
the
alleged
infringing
ar5cle
was
copied,
directly
or
indirectly,
from
the
copyright
work
and
ii)the
act
of
copying
was
done
in
rela5on
to
the
work
as
a
whole
or
any
substan5al
part
of
it.
• Stoddard
Interna+onal
plc
v
William
Lomas
Carpets
Ltd
[2001]
FSR
44
–
• Direct
evidence
of
copying
is
rare
–
designers
rarely
have
“spies
at
their
side.”
• Copying
is
proven
by
dint
of
an
inference
drawn
from
objec5ve
similari5es
between
designs.
• Onus
then
shiTs
to
D
to
sa5sfactorily
explain
the
similari5es.
www.4-5.co.uk

4.
Not
a
‘Mountain
to
climb’
following
Kaldor
www.4-5.co.uk

5. Principles
emerging
out
of
Kaldor
• Lesser
burden
on
D.
• More
rigorous
eviden5al
burden
on
C.
• C’s
evidence
of
copying
was
not
compelling
enough
to
give
Hacon
J
‘reason
to
disbelieve’
coherent
evidence
given
by
D’s
principal
witness,
its
designer.
• Importance
of
ini5al
design
brief.
• Designers
to
maintain
a
proper
audit
trail.
www.4-5.co.uk

6. www.4-­‐5.co.uk
Significance
of
Decision
Significance
of
Judgment
in
Kaldor
v
Lee
Ann:
-­‐
Clarifies
that
mere
‘objec5ve
similari5es’
are
insufficient
to
establish
copying.
-­‐
Establishes
a
‘sliding
scale’
in
respect
of
proving
an
allega5on
of
copying.
-­‐
Emphasises
importance
of
maintaining
coherent
evidence
of
the
design
process
if
there
is
a
possibility
that
design
might
be
copied.
Provides
a
useful
summary
of
the
law
rela5ng
to
copying.

7. 4-­‐5
Gray’s
Inn
Square
London
WC1R
5AH
+44(0)20
7404
5252
clerks@4-­‐5.co.uk
www.4-­‐5.co.uk
Presentation by
Alexander Rozycki
______________
Barrister