Design Rights in Wedding Dresses: Madine and Another v Phillips and Another











Jane Lambert

Intellectual Property Enterprise Court (Ms Amanda Michaels)  Madine and Another v Phillips and Others [2017] EWHC 3268 (IPEC) (13 Dec 2017) 

Thelma Madine makes wedding addresses.  According to Amanda Michaels, who tried an action that Mrs Madine brought against Miss Leanne Phillips and her mother Mrs Pauline Phillips, two of her former employees, for design right and copyright infringement and passing off, "the hallmark of her dress designs is their extravagance, not just in terms of the price of the gowns, but in terms of the size and weight of the skirts, which tend to have to be supported by hoops (like a crinoline), and the elaborate nature of the decoration applied to the dresses." Mrs Madine was featured in the Channel 4 documentary My Big Fat Gypsy Wedding which was broadcast some years ago.

The Action
One of Mrs Madine's customers was a bride who is referred to as "Delilah" in Miss Michael's judgment.  Delilah appears in the above photo  in one of Mrs Madine's creations on her wedding day.  More detailed photos of that dress appear at Annex A to Ms Michael's judgment in Madine and Another v Phillips and Others [2017] EWHC 3268 (IPEC) (13 Dec 2017).  Mrs. Madine claimed that design right subsisted in the design of that dress and also in the design of a modified dress that she and Mrs Phillips had created for another customer, Miss Chenise McCarthy. Mrs Madine complained that Miss Phillips and her mother had infringed that design right by making and selling the dress that appears in Annex C to Miss McCarthy and also by authorizing the manufacture of figurines of a woman wearing that dress an example of which appears in Annex D.

The Issues
The issues in dispute were whether:
  • design right subsisted in the design of Delilah's wedding dress;
  • design right subsisted in the design of a modified dress for Miss McCarthy;
  • those design rights had been infringed by making and selling the dress in Annex C to Miss McCarthy;
  • the design rights had been infringed by the manufacture of the figurines;
  • Mrs Phillips was liable to Mrs Madine; and
  • Miss Phillips had authorized the making of infringing figurines.
Whether Design Right subsisted in the Design of Delilah's Wedding Dress
Design right is defined by s.213 (1) of the Copyright, Designs and Patents Act 1988 ("the CDPA") as a property right which subsists in accordance with Part III of the Act in an original design.  The next subsection defines design as "the design of ... the shape or configuration (whether internal or external) of the whole or part of an article." "Original" is not defined as such though s.213 (4) provides:

"A design is not “original” for the purposes of this Part if it is commonplace in a qualifying country in the design field in question at the time of its creation; and “qualifying country” has the meaning given in section 217(3)".

However, the Court of Appeal decided in Farmer Build Ltd v Carier Bulk Materials Handling Ltd and Others [1998] EWCA Civ 1900 (3 Dec 1998)  [1999] ITCLR 297, [1999] RPC 461, [2000] ECDR 42 that originality for the purposes of design right is very much the same as it is for copyright.

The evidence before the learned recorder was that Delilah had asked Mrs Madine to make her a wedding dress in about January 2010.  She said that she wanted "a very plain silk dress, without diamanté or crystals, but with 'piano pleats." Mrs Madine said that she had suggested using pleated fabric arranged in a series of fan shapes over the skirt of the dress and that she and Leanne Phillips had developed the design together.  Miss Phillips said that the design was hers as she did the bulk of the design work.   The wedding was postponed until August 2011 and Delilah contacted Mrs Madine again in June of that year.  Delilah confirmed that she wanted the dress so it had to be made very quickly.  They found that they did not have enough pleats to cover the skirt so they improvised by including two layers of gathered swags as well as pleats.

Mrs Madine alleged that design right subsisted in the shape/silhouette of the skirt, the shape and relative size of the individual fans, the number, positioning and arrangement of the fans of the skirt as seen from the front, the shape of the portion immediately above the hem, the swags over the hips and the shape of the peplum but not the design of the back of the skirt with its combination of pleats and swags. As it had not been suggested that amounted to an arbitrary selection of "disembodied features" it seemed to the recorder that Mrs Madine had a legitimate claim to design right in part of an article, namely the skirt.  As originality was conceded at trial, Miss Michaels concluded that design right subsisted in that design.

Whether Design Right subsisted in the Design of the Dress for Miss McCarthy
Delilah's dress had received a lot of publicity. Photographs appeared in Mrs Madine's books, Tales of the Gypsy Dressmaker and Gypsy Wedding Dreams. Others were posted to Mrs Madine's Facebook page.  Miss McCarthy saw some of those photographs and decided that she would like a dress similar to Delilah's but with  diamanté decorations on the bodice and skirt. She visited Mrs Madine's premises where she was attended by Mrs Phillips.  Mrs Phillips recorded Miss McCarthy's requirements and produced a rough sketch.  Mrs Phillips estimated a fee for making the dress and took a deposit.

Some time after that visit Mrs Madine learned that the wedding had been postponed.  Towards the end of December Mrs Madine quarrelled with Miss Phillips and sacked her.  Miss Phillips brought unfair dismissal proceedings against Mrs Madine which were successful. She also opened a wedding shop in competition with her former employer from Mrs Madine's old premises.  Shortly after the hearing of her daughter's unfair dismissal claim Mrs Phillips gave up her job and brought proceedings against Mrs Madine for constructive dismissal though these were unsuccessful.

Miss McCarthy returned in June 2013 and confirmed that she still wanted the dress.  As Miss Phillips no longer worked for Mrs Madine, Miss McCarthy was attended by Mrs Madine herself.  Mrs Madine claims to have made some more sketches. Shortly afterwards, Miss McCarthy told Mrs Madine that the wedding had been postponed again. Mrs Madine allowed her to use the deposit to buy another dress.

The question for Miss Michaels was whether the designs made by Mrs Phillips and Mrs Madine for a modified dress were sufficient to create new design rights. The modifications were essentially the diamanté decorations. The recorder found the questions finely balanced but decided that they were.

Whether the Design Rights in the Designs of Delilah's Dress and Miss McCarthy's Modified Dress had been infringed
Miss McCarthy did not return to Mrs Madine for her wedding dress.  Instead,she went to Miss Phillips and asked her to make it.  Miss. Phillips agreed and made her the dress that appears in Annex C. The question that Miss Michaels had to decide was whether Miss Phillips infringed Mrs Madine's design rights in the design of Delilah's dress and/or in the design of the modified dress by making and selling the dress that appears in Annex C.

Miss Michaels reminded herself that design right is infringed by a person who without the licence of the design right owner does, or authorizes another to do, anything which is the exclusive right of the design right owner.  S.226 (1) of the CDPA provides:

"The owner of design right in a design has the exclusive right to reproduce the design for commercial purposes—
(a) By making articles to that design, or
(b) By making a design document recording the design for the purpose of enabling such articles to be made."

S.226 (2) adds that "reproduction of a design by making articles to the design" means  "copying the design so as to produce articles exactly or substantially to that design." 

Making a dress that looks the same as a dress in which design right subsists is not enough.  There are all sorts of reasons why one article can resemble another of which copying is just one possible explanation.  Design right is infringed only when a design has been copied.  The recorder instructed herself at paragraph [52] of her judgment that "where there is substantial similarity this will be seen as prima facie evidence of copying, particularly when coupled with proof of access to the earlier design."  Miss Michaels compared the photographs in Annex C with those in Annex A and found that the dress in Annex C included the most significant features of Delilah's dress design, namely the shape/silhouette of the skirt, the shape and relative size of the fans, the number, positioning and arrangement of the fans of the skirt from the front, and the swags over the hips. She saw was one difference in that the peplum of Delilah's dress had more waves than the peplum of the Miss McCarthy's but the learned recorder did not consider that difference to be significant.  In her view there were substantial similarities between Delilah's dress and Miss McCarthy's, and those were quite substantial enough to raise an inference of copying.  Miss Phillips explained how she had made Miss McCarthy's dress but not how she had designed it.  Her explanation was not enough to counter the inference of copying.

Miss Michaels instructed herself that s.226 (2) requires a copy to be exactly or substantially to the design in which design right subsists.  In Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Group Ltd [2009] ECDR 11, [2009] EWHC 26 (Pat), (2009) 32(4) IPD 32031, Mr Justice Lewison had said at paragraph [31] of his judgment that   "even if the design has been copied, the infringing article must be produced 'exactly or substantially' to the copied design. Mere similarity is not enough." In C&H Engineering v F Klucznik & Sons Ltd (No.1) [1992] F.S.R. 421 Mr Justice Aldous had said that

"the test for infringement requires the alleged infringing article or articles be compared with the document or article embodying the design. Thereafter the court must decide whether copying took place and, if so, whether the alleged infringing article is made exactly to the design or substantially to that design. Whether or not the alleged infringing article is made substantially to the plaintiff's design must be an objective test to be decided through the eyes of the person to whom the design is directed."

However, he added that although two separate criteria must be satisfied in theory it was "not easy to conceive of real facts (absent an incompetent copyist) in which a design is copied without the copy being made exactly or substantially to the copied design."  Despite the difference in the peplum, the recorder found that the dress in Annex C was made substantially to the design of Delilah's dress and the design of the modified dress that Mrs Phillips and Mrs Madine had created for Miss McCarthy. It followed that the dress in the photo in Annex C infringed the design rights in those designs.

Whether those Design Rights were infringed by the Manufacture of the Figurines
At the beginning of 2015, Miss Phillips entered a written agreement with a company that procures the manufacture of china figurines that are collected by travellers. By that agreement she agreed "to provide designs suitable for use in sculpting a range of figurines … in the form of photographs of her original dresses and design sketches to adapt or clarify design details to make them suitable for the manufacture of ceramic figurines." One of the designs that Miss Phillips provided to that company was the dress in Annex C. She said in her witness statement that she recalled sending photographs of the that dress to that company in or about January 2015. That company produced figurines of a woman wearing a dress based upon that design known as the "Crystal Figurine" which Miss Phillips offered for sale on her Facebook page. The Phillips' counsel conceded that there was no substantial difference between the dress in Annex C and the dress of the Crystal Figurines and that if the dress infringed then so would the figurines.  In view of that concession, the recorder found that the manufacture of the figurines infringed Mrs Madine's design rights too.

Liability of Mrs Phillips
It was alleged that Mrs Phillips had taken copies of the sketches that she and Mrs Madine had made of the modified dress and gave them to her daughter when she resigned from her employment but the recorder found no evidence that that had happened and could see no reason why she should have done so.  It was also alleged that she actively encouraged Miss McCarthy to take her business away from Mrs Madine and give it to her daughter but that allegation was not proved.  In the absence of anything that amounted to a common design the claim against Mrs Phillips failed.

Whether Miss Phillips had authorized the Manufacture of Infringing Figurine
In Twentieth Century Fox Film Corporation and another v Newzbin Ltd [2010] EWHC 608 (Ch), [2010] EMLR 17, [2011] Bus LR D49, [2010] ECDR 8, [2010] ECC 13, [2010] FSR 21, a case in which I was instructed to make closing submissions on behalf of the defendant, Mr Justice Kitchin drew a distinction between authorization (that is to say the grant or purported grant to do the right complained of) and "mere enablement, assistance or even encouragement of the infringement". Miss Phillips's defence was that she had not authorized the making of the figurines but merely enabled them to be made. The recorder considered Miss Phillips's agreement with the company that had procured the manufacture of the figurines and found that it amounted to authorization.

Discussion
S.1 (1) of the Intellectual Property Act 2014 had removed the words "any aspect of" from the definition of "design" from s.213 (2) of the CDPA.  Although it was not crucial to her decision, Miss Michaels considered the effect of the excision  in paragraphs [36] and [38] of her judgment.  Referring to paragraph [33] of Mr Justice Henry Carr's decision in Neptune (Europe) Ltd v Devol Kitchens Ltd [2017] EWHC 2172 (Pat) (25 Aug 2017) she concluded at paragraph [37] the omission of the words "any aspect of" made a substantive change to the law "by preventing claims in respect of disembodied features, arbitrarily selected, which are not, in design terms, parts of the design." She repeated the phrase "disembodied features, arbitrarily selected" at various parts of her judgment.

As Mr Justice Henry Carr noted in Neptune the purpose of the amendment is clear enough. It was to put paid to claims to design right in tiny details like the curvature of the contact lenses in Ocular Sciences Ltd v Aspect Vision Care Ltd (No.2) (1997) 20(3) IPD 20022, [1997] RPC 289, [1996] EWHC Patents 1. That judgment had unfortunate consequences as Mr Justice Laddie acknowledged:

"If the right is said to reside in the design of a teapot, this can mean that it resides in design of the whole pot, or in a part such as the spout, the handle or the lid, or, indeed, in a part of the lid. This means that the proprietor can trim his design right claim to most closely match what he believes the defendant to have taken. The defendant will not know in what the alleged monopoly resides until the letter before action or, more usually, the service of the statement of claim."

The unfairness was not that design rights subsisted in microscopic features - how else can you protect the design of a nano-machine - but that claimants could cherry pick the aspect of the design of an article upon which they were most likely to succeed. That in my very humble submission is the mischief that s.1(1) of the 2014 Act was intended to correct. After the amendment claimants could still claim design right in the spout, handle or lid of a teapot but not in a feature of the spout such as the lip of the spout or its tapering. One consequence of the reform is that a claimant could identify the part of the article in which design right was alleged to subsist in his or her particulars of claim but he or she could no longer define the design.  Thus, if a claimant claimed design right in a teapot spout he or she is stuck with the whole spout even if it contains differences from as well as similarities to the defendant's spout.

If that reasoning is correct, Miss Michaels appears to have allowed Mrs Madine to cherry pick the features of the design of her skirt that were most favourable to her case.  At paragraph [54] of her judgment the learned recorder said:

"There is only one pleaded feature which may be missing altogether in the Defendant's Dress, and that is the shape of the bottom of the skirt immediately above the hem. It is not possible to know whether the Defendant's Dress included the same detail, as this part of the dress cannot be seen in the available photographs. Plainly, the back of the skirt of the Defendant's Dress lacks the central swags of the Fan Dress which I have mentioned above, but this was not a pleaded feature of the design."

That sounds to me dangerously close than finding design right in an aspect of the design of the skirt rather than the skirt itself.

Further Information
Those who are new to design right law will find an introduction and overview which I have updated today at my Unregistered Design page,  Anyone wishing to discuss this article or unregistered design right generally should call me on 020 7404 5252 during office hours or send me a message through my contact form.

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