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Copyright protection for non-permanent works & the battle against look-alike products - a triumph for Charlotte Tilbury

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A recent intellectual property (IP) case has confirmed that copyright can exist in artistic works of a non-permanent nature. The case also provides an example of a successful copyright infringement claim made in relation to a look-alike product.

The case against Aldi Stores Ltd (Aldi) concerned make-up powder palettes featuring a design that was imprinted into the powder (in addition to a particular lid design, which will not be discussed in this blog). Islestarr Holdings Ltd, the company that owns the Charlotte Tilbury cosmetics brand, alleged that Aldi had infringed its copyright in relation to make-up palettes it claimed were substantially similar to those sold under the Charlotte Tilbury brand.

In its defence, Aldi argued that the ephemeral nature of the powder design denied it copyright protection, as the fact that it was obliterated by use meant that it was not sufficiently fixed.

Deputy Master Linwood rejected Aldi’s argument, drawing a comparison to other non-permanent artistic works which could also, in principle, be subject to copyright protection. For instance, sand sculptures which wash away with the tide, and a bespoke wedding cake that would be eaten.

Aldi’s product was found to infringe the powder design of the Charlotte Tilbury make-up palette, and summary judgment was granted.

This case is interesting as it clarifies that artistic non-permanent works can be protected by copyright (in contrast with musical, literary and dramatic copyright works which are subject to the requirement of being in recorded form), and it provides an example of a brand asserting copyright, as opposed to other IP rights, to prevent the sale of look-alike products.

As the law currently stands, to stop look-alike products based on passing off, there must be a misrepresentation that is likely to lead to deception as to the origin of the product. Also, whilst copyright was successful as a basis for stopping this look-alike product, product owners often struggle to establish a “substantial part” of their copyright work has been taken. In our view, the best way to protect products or packaging from future look-alike products is to obtain design registrations.

Shorter Trials Scheme in the Business and Property Courts - an alternative forum for IP disputes

This case was heard under the Shorter Trials Scheme in the Business and Property Courts. This is an alternative forum to the Chancery Division of the High Court and the Intellectual Property Enterprise Court, or IPEC, that is suitable for hearing straightforward IP disputes. The purpose of the Scheme is to achieve shorter and earlier trials for business related cases. Much the same as matters heard in IPEC, each stage of the proceedings is streamlined, but in contrast with IPEC, financial remedies are not limited to £500,000 and there are no caps on recoverable costs. In certain circumstances, this Court could therefore prove to be a preferable forum to hear higher value IP disputes.

If you have any questions about copyright or protecting intellectual property, please contact the IP Team.

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