Copyright in Antlers: ATB Sales Ltd v Rich Energy Ltd and Others

Red Deer Antlers
Author: Mehmet Karatay
Licence: Creative Commons Attribution-Share Alike 3.0 unported
Source: Wikipedia Antler

Jane Lambert

Intellectual Property Enterprise Court (HH Judge Melissa Clarke) ARB Sakes Ltd v Rich Energy Ltd. and Others [2019] EWHC 1207 (IPEC) 9 May 2019

This was a copyright infringement claim. The claimant trades as Whyte's Bikes and if you visit its website you should see a very distinctive antler logo. That was designed by two of its employees, Guy Farrant and Mark Morgan. The first defendant supplies an energy drink known as Rich Energy which it promotes with a racing car.  If you visit its website right now (but probably not for much longer) you will see a not dissimilar logo. The claimant claimed that the first defendant had copied the artwork for its logo. As the first defendant had registered that logo as a trade mark, the claimant applied for it to be declared invalid on the ground that its use was liable to be prevented by the law of copyright pursuant to s.5 (4) (b) of the Trade Marks Act 1994.

The Issues
The second defendant was the sole director and shareholder of the first defendant. The third director was the marketing consultancy that delivered the first defendant's logo.  At a case management conference that took place before Judge Hacon on 1 May 2018 the learned judge ordered the following issues to be tried:

"i) Whether D1's Device was the result of copying C's Device or independently designed;
ii) If copied, whether D1's Device reproduces the whole or a substantial part of C's Device;
iii) Whether, if the court finds infringement, the Second and Third Defendants are jointly liable for the infringing acts."

It was common ground that if the court found that the first defendant's logo infringed the copyright in the claimant's artwork, then the claim for a declaration of invalidity would succeed.

The Trial
The action came on for trial before Judge Melissa Clarke on 12 and 13 March 2019. Mr Farrant and Mr Morgan gave evidence for the claimant.  The second defendant, William Storey, who was the first defendant's sole director and shareholder, and Sean Kelly, the third defendant's director, gave evidence for the defendants.  Her Honour delivered judgment on 9 May 2019.

Whether the First Defendant's Logo resulted from Copying
Referring to Lord Millet's speech in Designer Guild Limited v. Russell Williams (Textiles) Limited (Trading As Washington Dc) [2001] ECDR 10, [2001] 1 All ER 700, [2000] UKHL 58, [2001] FSR 11, [2001] FSR 113, [2000] WLR 2416, [2000] 1 WLR 2416 at 2425, the judge directed herself at paragraph [15] of her judgment that "[a] prima facie case of copying may arise if there is substantial similarity and proof of access to the original work by the alleged infringers."

The judge compared the logos side by side and concluded at paragraph [102]:

"Although they are not identical, they are strikingly similar. D1's Device looks like C's Device. It is only on a closer inspection that certain differences reveal themselves, in particular the additional smaller two tines, and the thickening of the inner tines. I remind myself that Designers Guild posits as a first step a visual comparison of the two designs. The small differences in height of the antlers and specific angles are not noticeable on a strictly visual, side-by-side comparison, only on a measured analysis. The similarities are not merely that both have a triangular head, splayed antlers and inner tines which I agree are commonplace in representation of stag's head logos. It is the unusual proportions of the pointed, triangular face; the elegant pointed antlers; the placement of the inner, angled antlers; and the specific manner in which this stag's head is highly reduced and simplified; which can be seen in both C's Device are D1's Device. In my judgment, these similarities are sufficiently close, numerous and extensive to be more likely to be the result of copying than coincidence. I am also satisfied that there is sufficient evidence of the possibility of access by the Defendants to C's Device, because C's Device was available on the Claimant's website from as early as 2010; and the evidence of both Mr Storey and Mr Kelly is that in 2015 they looked at "hundreds" of stag head logos for inspiration. Together, I am satisfied that there is a strong prima facie presumption of copying which shifts the burden to the Defendants to satisfy the court that, despite the similarities, they did not result from copying, because of lack of actual access or because D1's Device was independently created."

The judge accepted the evidence of the claimant's witnesses but was critical of the evidence of the defendants' witnesses. She found their evidence on independent design at best, confused and contradictory. She held that Mr Kelly and Mr Storey had lied about not being familiar with the claimant's logo. She found it more likely than not that they were familiar with it, and that they directly and knowingly copied it in designing a logo for the first defendant. She reached that conclusion  for the following reasons:

"i) my concerns about Mr Kelly and Mr Storey's credibility;
ii) their own case of extensive searches and consideration of stag head logo designs created by others;
iii) their own evidence, albeit from 2018, that they used stag head logos of others as a 'starting point' for their own design;
iv) the, in my view, unreasonable unwillingness of both witnesses to even countenance the possibility that they might have seen, but forgotten, C's Device in the course of those extensive searches;
v) my findings that they have misled the court in relation to, inter alia, the creation and disclosure of the Brand Document and Mr Kelly's dishonest evidence in relation to the mirroring of the sketches and the application of false 'vector' lines to the final logo render, to support their case of independent creation;
vi) the fact that their story of independent creation through a reiteration of design sketches following Mr Storey's more angular and geometric preferences is undermined by the final vectors including curved designs which do not fit with this story;
vii) the high degree of inconsistency and contradiction between the differing accounts of the role each of Mr Storey and Mr Kelly played in the design process, which in my view is inconsistent with a truthful case of independent creation;
viii) the very limited documents available from 2015, which are fewer than I would expect to see had D1's Device truly been independently created; and
ix) the very high degree of similarity between C's Device and D1's Device;"

The defendant's counsel had proposed a very ingenious defence which might have prevented the judge from taking that approach had it succeeded.

"[S]ince no s... allegations of fraud and dishonesty have been pleaded", he submitted, "and since the Claimant has not challenged the authenticity of any document disclosed, the Claimant must therefore accept, and be treated by the court as having accepted, that:
i) The Defendants honestly believe that they knew nothing of the Claimant or C's Device until the letter before action in these proceedings
ii) The Defendants honestly believe that D1's Device was independently created; and
iii) All the documents disclosed by the Defendants in support of their claim of independent design are authentic. "

Counsel further submitted that if the court accepted the first two of those contentions, then the claimant's case would be limited to one of unconscious or subconscious copying.

The judge did not buy that argument for two reasons.  First, counsel and solicitors are required by their professional codes of conduct to take very great care before pleading fraud or dishonesty. They may do so only on clear instructions and compelling evidence. Secondly, it was for the court to decide whether there had been dishonesty. Its hands could not be tied by counsels' pleadings.

Whether the First Defendant's Logo reproduces the Whole or a Substantial Part of the Claimant's
S.16 (2) of the Copyright, Designs and Patents Act 1988 ("the CDPA") provides that copyright in a work is infringed by a person who without the licence of the copyright owner does, or authorizes another to do, any of the acts restricted by the copyright. One of those restricted acts is copying (see s.16 (1) (a)). S.16 (3) (a) adds that references in Part I of the CDPA to the doing of an act restricted by the copyright in a work are to the doing of it in relation to the work as a whole or any substantial part of it.   Judge Melissa Clarke referred to paragraph [65] of Mr Justice Arnold's decision in England And Wales Cricket Board Ltd and another v Tixdaq Ltd. and others  [2016] WLR(D) 169, [2016] Bus LR 641, [2016] EWHC 575 (Ch):

"…the starting point must be that ss. 16, 17 and 20 of the 1988 Act are to be construed so far as possible in conformity with arts 2 and 3(2) of the Information Society Directive. Article 2 gives authors and others the right to authorise or prohibit reproduction of works and other subject matter "in whole or in part". It is clear from Infopaq I [Case-5/08 Infopaq International A/S v Danske Dagblades Forening (EU:C:2009:465, [2009] ECR I-6569)] and subsequent authorities that, in the case of literary and artistic works within art. 2 of Berne, this does not mean that reproduction of any part is a restricted act. Rather, the CJEU has held that art.2 (a) of the Information Society Directive is to be interpreted by reference to the rationale for granting protection, which in the case of literary and artistic works is the intellectual creativity they express. Thus, as the Court put it in Infopaq I at [39]:

'…the various parts of works thus enjoy protection under Article 2 (a)… provided that they contain elements which are the expression of the intellectual creation of the author.'"

Thus, Her Honour directed herself at paragraph [14] of her judgment:

"Accordingly, when considering whether a "substantial part" of a copyright work has been taken for the purposes of section 16(3) CDPA 88, what matters is the extent to which that part contains elements which express the intellectual creation of the author. If it contains elements which express the intellectual creation of the author, then it is a substantial part. If it does not, it is not."

In their defence. the defendants pleaded that what is original in the claimant's work was the work as a whole. Accordingly, they submitted that because the first defendant's device is not a facsimile copy of the claimant's and does not take it in its entirety, that which makes the claimant's work original has not been taken.  Accordingly, there could have been no infringement.  Alternatively, they argued that what had been taken was the particular expression of the triangular head and the general ideas of the outer and inner antlers. That could not amount to an expression of the author's intellectual creation. Accordingly, that could not be a substantial part of the claimant's antler device.

Judge Clarke rejected those submissions. It was clear from Infopaq, she reasoned, that parts of a work are protected by copyright if they share the originality of the whole. The part in Infopaq was an extract of a work only 11 words long. The Court of Justice of the European Union held that copyright would be infringed if the elements reproduced contained the expression of the intellectual creation of their author.  

In Her Honour's judgment, there were elements of the expression of the intellectual creation of the author of the claimant's device in the first defendant's.  She said at [127]:

"These can be seen in the significant similarities between D1's Device and C's Device, which go well beyond a triangular head and general ideas of outer and inner antlers, as I have described. I consider the originality of C's Device to be evidenced by the fact that despite the extensive searching that both the Defendants and the Claimant have carried out in 2018, neither has been able to find another stag's head logo which has anything close to the level of similarity to C's Device as D1's Device displays, although almost all have general ideas of outer and inner antlers and a number display a triangular or triangular-shaped head."

She added at the next paragraph:

"In my judgment, the high level of similarity between the two devices means that I find that what has been copied from C's Device is the author's own intellectual creation (or, using the English common law test, the author's skill and labour), albeit (a) imperfectly copied; and (b) then subjected to small changes which amount to the addition of two small antler points, the slight thickening of the inner antlers, and small changes in the height of the antlers and angle between them, which are difficult to identify without measuring. Those imperfections and changes to form D's Device are insufficient to negate or remove the existence of the author's intellectual creation, in my judgment. For those reasons I accept the Claimant's submission that what has been copied is the whole of C's Device. If I am wrong about that, and the imperfections in copying and small changes introduced by Mr Kerry mean that the whole of C's Device has not been copied, then I have no doubt that what has been copied is at least a substantial part of C's Device"

Whether the Second and Third Defendants are Jointly and Severally Liable for the Infringing Acts
Judge Clarke referred to Judge Hacon's judgment in Vertical Leisure Ltd v Poleplus Ltd and Another  [2015] EWHC 841 (IPEC) in which he explained the Supreme Court's judgment in Fish & Fish Ltd v Sea Shepherd UK 2015] UKSC 10, [2015] AC 1229, [2015] 4 All ER 247, [2015] 2 WLR 694, [2015] 1 AC 1229, [2015] 1 Lloyd's Rep 593, [2015] 2 All ER (Comm) 867, [2015] WLR(D) 102:

"I interpret this to mean that in order to fix an alleged joint tortfeasor with liability, it must be shown both that he actively co-operated to bring about the act of the primary tortfeasor and also that he intended that his co-operation would help to bring about that act (the act found to be tortious). Liability will always be subject to the threshold requirement that the alleged joint tortfeasor's contribution to the act was more than de minimis."

In view of the judge's findings on copying, there was not much left in the way of dispute between the parties on that issue. There was collaboration between the first and third defendants and the second defendant was responsible for the activities of the first defendant. 

This case contains excellent restatements of the law on originality, the presumption of copying, substantiality and joint liability in tort. It will also be read for the defendants' counsel's ingenious submissions on tieing the court's hands, originality and substantiality.  Had any of those defences succeeded they would have had massive repercussions on the law of copyright.  Anyone wishing to discuss this case or copyright generally should call me on 020 7404 5252 or send me a message through my contact form.  


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