Dragons - Evans v John Lewis Plc

Author Friedrich-Johann-Justin-Bertuch 

 

Jane Lambert

Intellectual Property Enterprise Court (HH Judge Melissa Clarke) Evans v John Lewis Plc and another [2023] EWHC 766 (IPEC) (3 April 2023)  

This was another copyright case that turned on whether copying could be proved.  The claimant was the self-published author of a children's book about a young dragon who could not help emitting fire. She claimed that a substantial part of her work had been copied in an advertising film that had been made by the second defendant for the retailer John Lewis Plc at Christmas 2019. That film featured another fire-emitting young dragon and was accompanied by a spin-off children's book called Excitable Edgar.  The claimant sued for copyright infringement. The creators of the film counterclaimed for a declaration of non-infringement and a publicity order.  The action and counterclaim came on for trial before Her Honour Judge Melissa Clarke on 30 and 31 Jan 2023.  By her judgment dated 3 April 2023, the learned judge dismissed the claim and allowed the counterclaim (see Evans v John Lewis Plc and another [2023] EWHC 766 (IPEC) (3 April 2023)),

The Parties

The claimant was Fay Evans.  She was the author of a book entitled  “Fred the Fire-sneezing Dragon” which was abbreviated to "FFD". She also owned the copyrights in the illustrations for the book which had been assigned to her by the freelance artist Lisa Willians.   John Lewis Plc was the first defendant.  The second was DBB UK LIMITED which was known as adam&eveDBB. It created the film and commissioned the book.

The Claim

Judge Clarke set out the claimant's case in para [23] of her judgment:

"1) FFD contains original literary and artistic works created by the Claimant and Ms Williams which encompass elements of the expression of their intellectual creation, and which qualify for copyright protection in the UK;

ii) This includes rights of copyright in the principal character of the young dragon, Fred;
iii) The Claimant owns the entirety of copyright in FFD as a result of the assignment by Ms Williams;
iv) FFD was available to the public from 7 September 2017, over two years before the first broadcast of the 2019 Advert and the release of Excitable Edgar
v) The 2019 Advert and Excitable Edgar contain striking similarities to FFD, although it is not alleged that either is an exact reproduction of the whole or part of FFD, and the similarities relied on are at various levels of generality;
vi) The similarities are identified in paragraphs 16, 17 and 20 of the Particulars of Claim and the Schedules to the Particulars of Claim, Schedule A being the pleaded material features of Fred’s character and situation and Schedule B being the pleaded narrative elements of FFD; and
vii) The similarities can only be accounted for by the Defendants copying elements of the intellectual creation contained in FFD. Both JLP and adam&eveDBB are liable for that copyright infringement."

The Defence

The defendants denied that they had copied the claimant's book or Ms Williams's drawings  They pleaded that they had created the film independently.  They pointed to the differences between the claimant's book, their film and the Excitable Edgar book.  They identified other children's books with a similar theme.   They denied that anyone involved in making the film or publishing the book knew anything about Ms Evans's book,

The defendants sought the declaration and publicity order because Ms Evand had complained about the film on social media in 2019 and had repeated her complaints at Christmas 2020, 2021 and 2022, 

The Issues

The following issues were agreed by the parties and approved by the court:

"i) Whether any of the elements of FFD listed in Schedules A and B and paragraph 20 of the Particulars of Claim (the “Elements”) are elements of the expression of either (a) the Claimant’s or (b) Ms Williams’s own intellectual creation (as the case may be) such that they have at material times been protected by copyright.
ii) To the extent that any of the Elements have been so protected:

a) Whether any and if so which of the Elements has been copied and to what extent so that either the Christmas Advert or Excitable Edgar is a reproduction of any one or more of the Elements and is thereby an infringing copy of the Claimant’s Book.
b) If so, whether the Defendants have infringed the Claimant’s copyright by carrying out any of the acts listed in paragraphs 22 and 23 of the Particulars of Claim.

iii) Whether the Claimant is entitled to the relief claimed in the Particulars of Claim.
iv) Whether the Defendants are entitled to the relief sought in their Counterclaim."

"i) Whether any of the elements of FFD listed in Schedules A and B and paragraph 20 of the Particulars of Claim (the “Elements”) are elements of the expression of either (a) the Claimant’s or (b) Ms Williams’s own intellectual creation (as the case may be) such that they have at material times been protected by copyright."

The judge explained in para [28] of her judgment that the defendants had put the claimant to proof that her book contained elements which were the expression of her and Ms Williams’ intellectual creation at all. In closing, the defendants' counsel conceded that it did. They accepted that the rights of copyright in the book were owned by Ms Evans as pleaded by her.

"ii) To the extent that any of the Elements have been so protected:

a) Whether any and if so which of the Elements has been copied and to what extent so that either the Christmas Advert or Excitable Edgar is a reproduction of any one or more of the Elements and is thereby an infringing copy of the Claimant’s Book.
b) If so, whether the Defendants have infringed the Claimant’s copyright by carrying out any of the acts listed in paragraphs 22 and 23 of the Particulars of Claim."

After referring to s.16 of the Copyright Designs and Patents Act 1988 ("CDPA"), the judge directed herself that the first step was to establish whether the Defendants have copied the copyright work. She added that that required a multifactorial assessment which Mr Justice Wilberforce described in Francis Day & Hunter Ltd v Bron [1963] 1 Ch 587 described as 

“a judgment of fact upon a number of composite elements: the degree of familiarity (if proved at all or properly inferred) with the plaintiff’s work, the character of the work, particularly its qualities of impressing the mind and memory, the objective similarity of the defendant’s work, the inherent probability that such similarity as is found could be due to coincidence, the existence of other influences upon the defendant… and not least the quality of the defendant[‘s] own evidence on the presence or otherwise in his mind of the plaintiff’s work”.

Her Honour noted that Lord Justice Mummery had said at para [141] of his  judgment in Baigent and another v The Random House Group Ltd [2007] EWCA Civ 247 (28 March 2007) that:

"The "text" of a literary work may cover more than the particular words in which it is expressed and extend to its overall content, including the selection, arrangement and development of ideas, theories, information, facts, incidents, characters, narrative and so on."

She also noted that Lord Justice Floyd had said at para [35] of his judgment in Kogan v Martin and others [2019] EWCA Civ 1645“ that copyright protection can extend to the plot of a literary work, even where the precise words of the work are not taken”,

He had added at para [41]:

“it is the skill and effort involved in creating, selecting or gathering together the detailed concepts or emotions which the words have fixed in writing which is protected in the case of a literary or dramatic work…” 

In Shazam Productions Ltd v Only Fools The Dining Experience Ltd. and others [2022] EWHC 1379 (IPEC) John Kimbell QC had held at para [113] of his judgment that the characteristics of a fictional character are protectable by copyright as a literary work.   Also, in Pasternak v Prescott [2022] EWHC 2695 (Ch) Mr Justice Edwin Johnson had said at para [142] of his judgment in that case that the selection, arrangement and structure of events, together with the forms of expression of facts and incidents, can be copied and result in infringement even where there is no copying of text. He also said at [178] that copyright can subsist in a selection of events which form only part of a larger selection of events, and infringement can occur if there is copying of only part of that selection. 

Judge Melissa Clarke summed up those principles at para [40] of her judgment:

"These cases all seem to me to be examples of the application of the test from Infopaq ....... that copyright subsists in the expression of the intellectual creation of the author so long as it is identifiable with sufficient precision and objectivity, and that there will be copyright infringement if what has been taken includes the expression of that intellectual creation. "

In IPC Media Limited v Highbury-Leisure Publishing Limited 2005] FSR 20, [2004] EWHC 2985 (Ch). Mr Justice Laddie had warned that “In copyright cases, chipping away and ignoring all the bits which are undoubtedly not copied may result in the creation of an illusion of copying in what is left”. There was a dispute as to whether that was still good law in view of the Court of Justice's decision in Infopaq.  Without deciding the point, Her Honour said at para [42]  "that IPC Media remains a useful warning that where one has chipped away at something, one must examine what remains carefully to assess whether it does truly reproduce elements of the author’s intellectual creation, or merely gives the illusion of it."

There was also a dispute as to whether a claimant has to prove actual access to the original work on the balance of probabilities or merely the possibility of access.   In Sheeran and others v Chokri and others [2022] EWHC 827 (Ch), Mr Justice Zacaroli had said:

"[24] While the legal burden rests with the person alleging infringement, in the case of conscious copying the evidential burden shifts to the alleged infringer if there is proof of sufficient similarity and proof of access. There was some debate as to whether what was required was a proof of access, or proof of the possibility of access.
[25] The weight of authority supports the former: see, for example, Designers Guild (above), per Lord Millett at p.2425E; Baigent v Random House [2007] EWCA Civ 247 at [4], although I do not think anything turns on it in this case. Tens of thousands of new songs are uploaded to Internet sites daily. It clearly cannot be enough to shift the burden of proof that a song was uploaded to the Internet thereby giving the alleged infringer means of accessing it. In every case, it must be a question of fact and degree whether the extent of the alleged infringer’s access to the original work, combined with the extent of the similarities, raises a sufficient possibility of copying to shift the evidential burden
.............
[26] Irrespective of where the burden lies, infringement requires there to have been actual copying, which necessarily entails that the alleged infringer not only had access to the original work, but actually saw or heard it."

Judge Melissa Clarke ruled as follows at para [45]:

"In my judgment, as Zacaroli J states above, the question for the Court is whether there has been actual copying, and that requires access and not just the possibility of access. However, that access may either be evidenced directly, or it may be inferred from the possibility of access and other circumstances in the case. That is the point made by Wilberforce J in Hunter Day, quoted above, I believe, when he referred to: 'the degree of familiarity (if proved at all or properly inferred) with the plaintiff’s work'. That inference must, of course, be properly drawn. But where there is only a possibility of access and an inference cannot properly be drawn that the alleged infringer actually did access the original work, then there cannot be a finding of copying."

Between paras [61] and  [77] of her judgment, the judge set out the defendants' evidence as to how they made the film.  In para [78] she mentioned the evidence on the creation of Excitable Edgar. From [79[ to [86] she considered  whether the creatives  could have seen Fred the Fire-Sneezing Dragom.  She quoted the Chief Creative Officer at adam&eveDDB:

“Trawling through children’s books was simply not part of the process of creating the Christmas Advert or any creative work. I do not believe that anyone involved looked at any dragon-themed children’s books for creative inspiration, and certainly none were mentioned to me as part of creating the outline or in any way in relation to the [2019] Advert… I can categorically confirm that it is an original creative work that was the result of hard work and creativity of myself, my colleagues at adam&eveDBB, Dougal [Wilson], Untold and JLP”.

Between [87] and [109] Her Honour addressed the similarities between the claimant's book, the film and Excitable Edgar.   As to access, she said at [110] "the Claimant’s case on access by the Defendants is so weak that it seems to me to be extremely unlikely that anyone involved in the 2019 Advert or Excitable Edgar had access to FFD before launch at all."  There was no direct evidence and the circumstances were not such as to raise an inference. She said at [119] that she was satisfied on the balance of probabilities that there has been no access to Ms Evands's work by any of the creatives involved in the development of the film or Excitable Edgar, and so there can have been no copying.

The third issue, namely whether the claimant was entitled to the relief claimed in the Particulars of Claim, did not need to be considered.

"iv) Whether the Defendants are entitled to the relief sought in their Counterclaim."

There was no dispute that the court had the power to grant a declaration of non-infringement.  The question was whether it would serve a useful purpose.  The judge considered that such a declaration would suit "the useful purpose of making clear to the public and the industries in which the Defendants and their creative partners work that the allegations of copyright infringement impugning the integrity of their creativity have been rejected by this Court, providing some justice to the Defendants without any appreciable prejudice to the Claimant." 

 Similarly, there was no dispute that the court could make a publicity order.   However, it was a discretionary, equitable remedy and the discretion had to be exercised judicially, taking into account all the relevant circumstances of the case. The judge decided to make one in this case because of the claimant's publicity campaign carried out over  3 1/2 years, including around the trial itself.   Ms Evans may have been entitled to publicize her claim but the quid pro quo was that "her claims having been rejected by the Court, the Court will require her to publicise the judgment and order made against her in order to endeavour to redress the balance."   Judge Melissa Clarke recorded at para [125] of her judgment that the parties had agreed the terms of a publicity order as follows

"the terms and format of a notice to be published for at least six months on the home page of the Claimant’s website, on her Facebook page and Twitter account. That notice includes a link to this judgment."

Comment

A particularly useful part of this judgment was to view such cases as Baigent, Kogan, Shazam and Pasternak through the lens of infopaq.  This case follows Molavi v Gilbert and others [2023] EWHC 646 (Ch) (23 March 2023) and PQ Systems Europe Ltd and another v Aughton and another [2023] EWHC 581 (Pat) which also turned on whether there had been non-literal copying. Her two-step approach of identifying the claimant's intellectual creation and then determining whether that has been taken will greatly simplify the resolution of such cases in future,

Another useful part of this decision is that the likelihood of actual access must be shown to raise a presumption of copying and not just a possibility.   It may be possible in some circumstances to infer the likelihood of such access but it usually requires more than the uploading of the original work to the internet.

Finally, this is a good example of where a declaration of non-infringement and a publicity order is appropriate.  The terms that the parties agreed in this case are not a bad model.

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