Unregistered Design Rights: Edwards v Boohoo.com UK Ltd and others
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Intellectual Property Enterprise Court (Mr Tom Mitcheson KC) Edwards v Boohoo.com UK Ltd and others [2025] EWHC 805 (IPEC) (3 Apr 2025)
This was an action for unregistered design right infringement. The claimant was Sonia Edwards, a fashion designer who promoted her work on Instagram, Facebook, CwtchyCwtchy, and other websites. CwtchyCwtchy seems to be derived from the Welsh word "cwtch", which can be translated roughly as "hug". Ms Edwards complained that Boohoo.com UK Limited and its related companies ("Boohoo") infringed design rights in five of her designs by making and selling clothes to those designs. The action was tried by Mr Tom Mitcheson KC sitting as a deputy judge of the High Court on 30 and 31 Jan 2025. He handed down judgment on 3 April 2025. By para [151] of his judgment in Edwards v Boohoo.com UK Ltd and others [2025] EWHC 805 (IPEC) (3 April 2025), Mr Mitcheson dismissed Ms Edwards's action on the ground that design right did not subsist in Ms Edwards's first design, Boohoo did not make articles exactly or substantially to her second design and or copy any of her designs.
The Designs
Ms Edwards claimed that design right subsisted in the following designs:
Design 1: Bikini top multiway
Design 2: Organza rib puff sleeve high neck fitted top
Design 3: High-waist gather to front and gather to back ruched skirt
Design 4: High waist single gather ruched front skirt
Design 5: High waist half ruched front legging
Ms Edwards claimed that design right subsisted in Design 1: the bikini top multiway by virtue of the following features, which Mr Mitchison noted at para [27] of his judgment:
"i) the two front breast panels that have openings at the top and bottom allowing the straps to be passed through,
ii) with the top strap forming one piece (without fastenings), and,
iii) the neck piece and bottom strap being able to be tied."
"i) the two front breast panels that have openings at the top and bottom allowing the straps to be passed through,
ii) with the top strap forming one piece (without fastenings), and,
iii) the neck piece and bottom strap being able to be tied."
However, she had also created the following multiway bikini top in 2011:
The only difference that the deputy judge could detect between the 2011 design and the 2016 design is that, as worn, the top strap is threaded with the ends in the middle, between the panels, and tied around the neck. That threading arrangement had already been shown in the 2011 screenshot. The only difference was the way that the straps were positioned around the wearer's neck and body. Taken off the wearer, the shape and configuration of the bikini top would be the same, save perhaps for adjusting the length of the straps between the panels, which would occur to some extent in any case, depending on the precise body shape of the wearer. Mr Mitcheson did not consider that that merited a fresh design right accruing in 2016. There was insufficient originality in the decision to thread the straps and position them around the body as claimed. Alternatively, the threading features ((ii) and (iii)) were mere methods or principles of construction and were already part of the 2011 design in any event.
On the subject of originality. the learned deputy judge referred to the judgment of the Court of Justice of the European Union's in C-5/08 Infopaq International A/S v Danske Dagblades Forening [2009] EUECJ C-5/8, ECLI:EU: C:2009:465, [2009] EUECJ C-5/08, [2009] ECDR 16, EU: C:2009:465, [2010] FSR 20, [2009] ECR I-6569, [2012] Bus LR 102 that a design must be the expression of the author's own intellectual creation. He also considered para [16] pf Lord Justice Arnold's judgment in THJ Systems v Sheridan [2023] EWCA Civ 1354 and the cases cited therein that the standard is met where the author was able to express their creative abilities in the production of the work by making free and creative choices so as to stamp the work created with their personal touch. He thought that a consider that a designer of garments was generally likely to need to use their intellectual creation to create a design.
The deputy judge hesitated over Design 2 and Design 5 but decided that design right subsisted in the remaining four designs.
Copying
Ms Edwards contended that the following garment reproduced Design 1:
Mr Mitcheson considered that copying was unlikely for the following reasons:
"[104] Firstly, the opportunity for copying was extremely limited. I accept the evidence that the design of the bikini did not specify the straps as shown in Design 1. So it seems that the alleged infringing design was only created for the first time in the photo studio. I find it extremely improbable that the persons responsible for the photo shoot would have searched online for hints as to how to wear the bikini and found the Claimant's designs. Instead, it is much more likely that they assembled the cloth and straps themselves in the way that it can be seen being worn by the model. Alternatively, any of them might have had experience of "multiway" bikinis and suggested it be worn accordingly.
]105] Secondly, the time elapsed between the Claimant's publication of Design 1 (assuming a 2016 creation) and the design of the alleged/infringing bikini and/or the photo shoot. It is inherently improbable that even if someone involved had searched online for bikini designs, a design made some 5 years earlier would have appeared. This is particularly given the case that the Defendants' influences seem to be social media feeds rather than Google searches, which are normally organised by date, and the aim would be to reflect current fashion trends.
[106] I note that the Claimant has not put forward any evidence that her designs had become "stock" photos on social media sites such as Pinterest, which might have compensated for the passage of time between publication on her own social media feed and alleged copying.
[107] Thirdly, and combined with the previous point, is the relatively low profile of the Claimant's own social media channels. The contemporaneous material shows that the Claimant had only a handful of likes and comments on the Facebook pages showing her designs over the relevant period. Her Instagram account Scrunchbooty had just 268 followers in 2020.
[108] I accept the Claimant's submission that the numbers of people on social media were much smaller in 2012. The Claimant also pointed out that she had been found by Vogue despite her small social media following - so she had sufficient visibility to be noticed. Again, I accept that. But that does not do enough to establish that at the time any of the alleged infringing designs were made the Claimant's profile was big enough to make it likely that her postings would have been one of the sources of inspiration for the Defendants' articles. The numbers of followers and likes for her publication of Design 1 are just too small to make it likely that the Defendants would have come across it many years later.
[109] Fourthly, I flatly reject the suggestion by the Claimant that the Defendants would have used any depictions of the Claimant's designs which had been sent to Mr Kershaw or other members of the legal department by way of complaint. Although the Defendants were technically in possession of a large number of the Claimant's designs as a result of her voluminous correspondence with them, I reject any suggestion that these designs would have been passed on to the design team. That is inherently improbable in a situation where the Defendants were expending time and money in trying to persuade the Claimant that there were no infringements of her rights.
[110] Fifthly, the improbability of the above needs to be compared with the much higher probability that, given that the cloth and ties are identical as between Design 1 and Ms. Hale's non-infringing sketches, someone might have put them together in the same way as depicted in Design 1 without copying. That is a function of the low originality of the Claimant's design (assuming validity), which is generic enough that other people in the industry are quite capable of coming up with the same design independently. There are only so many ways to wear a multiway bikini such as the Claimant's, and given the very high volume of products, including bikinis, being made by the Defendants each week, it is not surprising that a case has arisen whereby one has been worn in the same way. The high level description of the design also makes it impossible to find any telltale indications of copying.
[111] Finally, I note that there is no suggestion in the Defendants' publicity that the alleged infringing design is or can be used "multiway". Had there been copying of the Claimant's material it might have been expected that the Defendants would wish to advertise this fact."
"[104] Firstly, the opportunity for copying was extremely limited. I accept the evidence that the design of the bikini did not specify the straps as shown in Design 1. So it seems that the alleged infringing design was only created for the first time in the photo studio. I find it extremely improbable that the persons responsible for the photo shoot would have searched online for hints as to how to wear the bikini and found the Claimant's designs. Instead, it is much more likely that they assembled the cloth and straps themselves in the way that it can be seen being worn by the model. Alternatively, any of them might have had experience of "multiway" bikinis and suggested it be worn accordingly.
]105] Secondly, the time elapsed between the Claimant's publication of Design 1 (assuming a 2016 creation) and the design of the alleged/infringing bikini and/or the photo shoot. It is inherently improbable that even if someone involved had searched online for bikini designs, a design made some 5 years earlier would have appeared. This is particularly given the case that the Defendants' influences seem to be social media feeds rather than Google searches, which are normally organised by date, and the aim would be to reflect current fashion trends.
[106] I note that the Claimant has not put forward any evidence that her designs had become "stock" photos on social media sites such as Pinterest, which might have compensated for the passage of time between publication on her own social media feed and alleged copying.
[107] Thirdly, and combined with the previous point, is the relatively low profile of the Claimant's own social media channels. The contemporaneous material shows that the Claimant had only a handful of likes and comments on the Facebook pages showing her designs over the relevant period. Her Instagram account Scrunchbooty had just 268 followers in 2020.
[108] I accept the Claimant's submission that the numbers of people on social media were much smaller in 2012. The Claimant also pointed out that she had been found by Vogue despite her small social media following - so she had sufficient visibility to be noticed. Again, I accept that. But that does not do enough to establish that at the time any of the alleged infringing designs were made the Claimant's profile was big enough to make it likely that her postings would have been one of the sources of inspiration for the Defendants' articles. The numbers of followers and likes for her publication of Design 1 are just too small to make it likely that the Defendants would have come across it many years later.
[109] Fourthly, I flatly reject the suggestion by the Claimant that the Defendants would have used any depictions of the Claimant's designs which had been sent to Mr Kershaw or other members of the legal department by way of complaint. Although the Defendants were technically in possession of a large number of the Claimant's designs as a result of her voluminous correspondence with them, I reject any suggestion that these designs would have been passed on to the design team. That is inherently improbable in a situation where the Defendants were expending time and money in trying to persuade the Claimant that there were no infringements of her rights.
[110] Fifthly, the improbability of the above needs to be compared with the much higher probability that, given that the cloth and ties are identical as between Design 1 and Ms. Hale's non-infringing sketches, someone might have put them together in the same way as depicted in Design 1 without copying. That is a function of the low originality of the Claimant's design (assuming validity), which is generic enough that other people in the industry are quite capable of coming up with the same design independently. There are only so many ways to wear a multiway bikini such as the Claimant's, and given the very high volume of products, including bikinis, being made by the Defendants each week, it is not surprising that a case has arisen whereby one has been worn in the same way. The high level description of the design also makes it impossible to find any telltale indications of copying.
[111] Finally, I note that there is no suggestion in the Defendants' publicity that the alleged infringing design is or can be used "multiway". Had there been copying of the Claimant's material it might have been expected that the Defendants would wish to advertise this fact."
Although at least one of the items alleged to infringe Designs 3 to 5 was created by one of the defendant companies as opposed to by a third party supplier, there was no documentary evidence one way or the other in relation to the derivation of the alleged infringements apart from in two respects in relation to alleged infringements of Design 5 neither of which pointed to copying. Mr Mitcheson was not willing to make adverse findings about copying by the Defendants because records had not been disclosed. As adverse documents had turned up as a result of the disclosure exercise, he rejected any suggestion that material has been deliberately destroyed or withheld. The second to fifth reasons given above in relation to Design 1 applied equally to Designs 3-5. The probability of Ms Edwards's designs being used as inspiration by Boohoo was very low given the passage of time and the reach of the Ms Edwards's social media feeds. Moreover, the low originality of the designs meant that it was much more likely that any similarities arose as a matter of happenstance given the very high volume of goods and limited design space inherent in producing garments to fit the human body. Once again, on the balance of probabilities, the deputy judge found that copying had not taken place.
Reproduction Exactly or Substantially to the Design
S.226 (1) of the Copyright, Designs and Patents Act 1988 confers the exclusive right to reproduce a design for commercial purposes by making articles to that design upon the owner of the design right in the design. Subsection (2) defines "reproduction of a design by making articles to the design" as "copying the design so as to produce articles exactly or substantially to that design," Mr Mitcheson explained at para [130] of his judgment that if he was wrong about the existence of copying, he had to assess whether the alleged infringements were made exactly or substantially to the claimant's designs.
In relation to Design 2, the only features that can sustain design right are the "puff sleeve" connected to an "extended cuff" and where the cuff is approximately the same length as the puff sleeve. In the alleged infringement, the cuff was much shorter. For that reason the deputy judge found that the allegedly infringing product was not made exactly or substantially to the claimant's design.
Comment
At para [153] of his judgment, Mr Mitcheson acknowledged that copying undoubtedly takes place within the fashion industry, particularly in fast fashion. Every time a retailer asks manufacturers to reproduce images found on social media, there is a risk of infringing someone's design rights. There are only so many ways to design clothing to fit the human body. Given the enormous production of fashion articles, it is completely unsurprising that some of those garments resemble articles designed previously by others purely as a matter of chance. Anyone wishing to discuss this article may call me on 020 7404 5252 during UK office hours or send me a message through my contact page at any time.
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