This article was first published by LexisNexis on 13 April 2023: https://www.lexisnexis.co.uk/legal/news/copyright-infringement-a-foray-into-the-dragons-den-evans-v-john-lewis-another
IP analysis: In a fiery battle of copyright infringement, the court examined the guiding principles, and rejected the claims. It is a timely reminder of the threshold required to establish infringement, the court finding there can be no copyright infringement without copying, and no copying if the work has not been accessed. Further, it demonstrates the price of publicising a claim is the court’s preparedness (as it did here) to make a declaration of non-infringement and publicity orders, to provide the defendants some justice and redress the balance. Written by Rosenblatt’s Dispute Resolution Partner Danielle Carr.
What are the practical implications of this case?
In a claim by Fay Evans (‘Evans’) against John Lewis Plc (‘JLP’) and DBB UK Ltd (‘DBB’), the court confirmed the key principles to establish copyright infringement. In particular, a multifactorial assessment is required to establish copying (Francis Day & Hunter Ltd v Bron [1963] 1 Ch 587). This involves examining the degree of familiarity, character, objective similarity of the works (and inherent probability it is due to coincidence), the existence of other influences and the defendant’s own evidence. Further, whether a substantial part has been copied is a matter of quality rather than quantity; and involves assessing whether the work truly reproduces elements of the author’s intellectual creation or merely gives the illusion of it. Finally, actual copying requires access, as evidenced directly or as may be inferred.
First, it is a timely reminder of the threshold and need for robust evidence (the court finding there was no infringement where the defendants had not seen Evans’s book until after their creations were launched and Evans made her allegations). As Her Honour Judge Melissa Clarke said: ‘There can be no copyright infringement without copying, and there can be no copying if the work alleged to have been copied has not been accessed…’.
Second, it signals the court’s preparedness to make a declaration of non-infringement and publicity order in favour of a defendant. It did so here, given Evans carried out a 3.5 year publicity campaign in respect of her claim, and where: (i) such a declaration ‘would suit the useful purpose of making clear to the public and the industries’ in which the defendants work that the allegations impugning the integrity of their creativity have been rejected, giving them ‘some justice’; and (ii) the quid pro quo of Evans publicising her claim is that, it being rejected, the court will require her to publicise the judgment and order against her ‘to endeavour to redress the balance’.
What was the background?
The claimant, Evans, self-published children’s books including ‘Fred the Fire-sneezing Dragon’ (‘FFD’), a story of a dragon, Fred, which accidentally emits fire when sneezing, with unfortunate consequences. FFD was made public in 2017, with readings, events, and modest sales, following. The first defendant, JLP, released a 2019 Christmas advert, created by second defendant, DBB. It features an excitable young dragon (which JLP said was conceived and outlined in 2016). The advert was released in November 2019, prompting Evans immediately to allege on social media that it copied FFD.
The issues for determination included: (i) on the claim, whether any elements of FFD are protected by copyright and if so, whether and to what extent any such elements were copied, and whether the defendants’ 2019 advert or an associated spin-off children’s book ‘Excitable Edgar’ infringed copyright in FFD; and (ii) JLP and DBB’s counterclaim seeking a declaration of non-infringement and a publicity order.
What did the court decide?
Claim — Whether there was a prima facie case of copying
The court found that a number of the alleged similar features of Fred in FFD, to the dragon in the 2019 advert and Edgar (‘JLP’s Dragons’), were found in JLP’s 2016 outline, so cannot have been copied. As to the other features Evans said had been reproduced, the court found:
- while Fred’s ‘child-size’ is protected by copyright, there was no sufficient similarity in size chosen for JLP’s Dragons so as to raise a presumption of copying
- it was not satisfied the ‘green’ colour, without more, is an element of Fred’s appearance amounting to an expression of intellectual creation (nor in any event, that it was used as a result of copying)
- certain other features may amount to intellectual creation; though they (ribbed stomach, triangular spikes, facial features and general body shape) are not so similar as to raise a presumption of copying
- standing back, the similarities viewed together (at the highest, the child-like size, ribbed stomach, triangular spikes and eyebrows) are not sufficiently similar to raise a presumption of copying
As to the narrative elements of Fred and the JLP Dragons relied upon, the court found: (i) that similarities of being permitted to participate in community life and earning applause as the hero, arose before the publication of FFD, so cannot amount to copying; (ii) ‘not flying’ was not a narrative element; and (iii) being the only dragon in the narrative, and with only human friends, are similar to FFD; but not sufficient (together with the few similarities in features identified) to suggest copying rather than coincidence.
Claim — Whether there was access
The court found Evans’s case on access ‘so weak’ that it seems ‘extremely unlikely’ the defendants had access to FFD before launch. Nor could any inference of access be drawn, given the work said to be copied was not so well-known that it is more likely than not it had been accessed (nor the similarities so numerous that coincidence is a less likely explanation). In particular, the similarities were few in number, FFD sold in very small numbers, and FFD was not mentioned during the creative development of the JLP Dragons. The court declined to draw any adverse inference from the defendants’ failure to call the creative who was responsible for the 2016 outline (nor was there any reason to suggest he would have seen FFD but hidden this from the other creatives, or abandon his ethical standards and put JLP at risk).
In short, there was no access to FFD, nor were the similarities such that any presumption of copying had been raised.
Counterclaim
The court made a declaration of non-infringement and a publicity order (rejecting Evans’s submission that both are unnecessary as the judgment itself is enough to clear the water). It did so given: (i) a declaration would make clear that the allegations of copyright infringement impugning the integrity of the defendants’ creativity, are rejected; and (ii) any commercial uncertainty caused by the claim for infringement has been magnified by Evans’s publicity campaign, such that requiring Evans to publicise the judgment against her may ‘endeavour to redress the balance’.
Case details:
- Court: Intellectual Property and Enterprise Court
- Judge: Her Honour Judge Melissa Clarke (sitting as a High Court judge)
- Date of judgment: 3 April 2023
How we can help
Rosenblatt has a wealth of dispute resolution experience in the IP sector. For enquiries, please contact our Dispute Resolution Partner Danielle Carr at danielle.carr@rosenblatt.co.uk.
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