Copyright and Passing off - Martin and Another v Bodegas San Huberto and Others

Aerial View of the AFG Museum in Buffalo, New York

Author BuffaloAKG14222  Licence CC BY-SA 4.0  Source Wikimedia Commons

Jane Lambert

Intellectual Property Enterprise Court (Mr David Stone sitting as a deputy judge of the High Court) Martin and Another v Bodegas San Huberto SA and others [2025] EWHC 1827 24 July 2025

This was a claim for copyright infringement and passing off. The work in which copyright was claimed was a black and white line wall drawing by the first claimant, Shantell Martin MBE which filled one end of the sculpture court of the Buffalo AKG Art Museum.  The transcript of Mr David Stone's judgment in this case refers to the "SKG Museum" in two places in the second paragraph.  That appears to be an error because there is an AKG Museum in Buffalo, New York named after its benefactors John J. Albright, Seymour H. Knox II, and Jeffrey Gundlach, but the only museums that showed up on a Google search of "SKG Museum" were in Thessaloniki.

According to the transcript, Ms Martin had assigned the copyright in that work to an entity called Found The Found LLC.  That entity and Ms Martin objected to what they claimed to be reproductions of Ms Martin's wall drawing on the labels of bottles of wine supplied by the Argentinian winery Bodegas San Huberto SA to GM Drinks Ltd.  G M Drinks imported San Huberto's wine and distributed it in the UK. Found The Found accused GM Drinks and its director Marc Patch of infringing its copyright in the wall drawing, while Ms Martin accused them of infringing her right to be identified as the author of the drawing and passing off by misrepresenting an endorsement by her of the winery and its products.

Mr Stone tried the action sitting as a deputy judge of the High Court on 27 and 28 May 2025 and handed down his judgment on 24 July 2025.   By para [163] of his judgment in Martin and others v Bodegas San Huberto SA and others [2025] EWHC 1827 Mr Stone held:

"In summary:
i) GM Drinks is liable to Found the Found under section 18 of the CDPA for copyright infringement of the Work for issuing to the public copies of the Work in the form of the First Label Products, but may not be liable for damages prior to shortly after 13 April 2020 if that infringement was innocent;
ii) GM Drinks is liable to Ms Martin for passing off the First Label Products as endorsed by Ms Martin;
iii) BSH and Mr Patch are joint tortfeasors only in relation to copyright infringement under sections 18, 22, 23 (a) and 23 (b) of the CDPA in relation only to the First Label Products relevantly dealt with from shortly after 13 April 2020; and
iv) no liability attaches to any of the Defendants in relation to the Second Label or the Third Label."

Issues

At the case management conference on 23 Oct 2024, Mr Stone ordered the following issues to be tried:

“Copyright Subsistence

1. Does copyright subsist in the Work under the CDPA?
2. Is Found the Found the owner of any copyright identified in paragraph 1? If so:
a. On what date did Ms Martin assign her copyright in the Work to Found the Found?
b. Was the above-mentioned assignment total or partial?
c. Is Ms Martin still the owner of any copyright in the Work?

Copyright Infringement

3. Is the First Label a copy of the Work or of a substantial part of the Work?
4. If yes, has the Second and/or Third Label been copied from the First Label, such that they or either of them constitute a substantial copy of the Work?

Passing Off

5. Does goodwill subsist in [T]he Style in the UK, including as generated by the endorsement of products sold by reference to the Style in the UK?
6. Is the goodwill in paragraph 5 owned by Ms Martin?
7. Have the Defendants misrepresented that their goods are connected in the course of trade with Ms Martin’s business?
8. If so, has such misrepresentation caused Ms Martin damage?

Joint Tortfeasorship

9. Are the Defendants or any combination of them joint tortfeasors in respect of (i) copyright infringement, and (ii) passing off, such that they are jointly liable for any of the acts alleged?”

Issue 1 - Does copyright subsist in the Work under the CDPA?

Ms Martin gave unchallenged evidence that she was a British citizen living in New York when she made the wall drawing.  Mr Stone held at para [51] of his judgment that copyright subsisted in the work by virtue of her nationality under s.154 (a) of the Copyright, Designs and Patents Act 1988, and/or residence under s.159 (1).  At the time of the work's creation copyright was owed by Ms Martin as the author of the work. There was no suggestion that the Work was not original.

Issue  2 - Is Found the Found the owner of any copyright identified in paragraph 1? If so:

a. On what date did Ms Martin assign her copyright in the Work to Found the Found?
b. Was the above-mentioned assignment total or partial?
c. Is Ms Martin still the owner of any copyright in the Work?

Mr Stone was shown an assignment signed by Ms Martin and the company dated 2 June 2021. The instrument assigned "all … copyright, as well as all causes of action throughout the world."  He held at [52] that the assignment was total and that Ms Martin did not retain any copyright in the work.

 Issue 3 - Is the First Label a copy of the Work or of a substantial part of the Work?

An image of Ms Martin's work appears in para [2] of Mr Stone's judgment and photos of the accused labels are at para [5].   Found The Found alleged that the defendants had infringed its copyright under ss.18, 22, 23 (a) and 23 (b) of the 1988 Act.  Importing the wine with the offending labels, offering it for sale and selling it in the UK were not contested.  The primary issue in relation to the first label was whether it reproduced a substantial part of the copyright work.

Mr Stone referred to para [83] of Mrs Justice Proudman's judgment in Newspaper Licensing Agency Ltd v Meltwater Holding BV [2010] EWHC 3099 (Ch); [2011] RPC 7 which referred to the Court of Justice of the European Union's judgment in Case C-5/08, Infopaq International A/S v Danske Dagblades Forening  EU: C:2009:465, [2009] EUECJ C-5/8, [2010] FSR 20, [2009] ECR I-6569, [2009] ECDR 16, [2009] EUECJ C-5/08, ECLI:EU: C:2009:465, [2012] Bus LR 102:

“The effect of Infopaq is that even a very small part of the original may be protected by copyright if it demonstrates the stamp of individuality reflective of the creation of the author or authors of the article. Whether it does so remains a question of fact and degree in each case. It is often a matter of impression whether use has been made of those features of the article which, by reason of the skill and labour employed in its production, constitute it an original copyright work. Is there merely a commonplace arrangement of unoriginal words (see Ladbroke at 276) as Mr Silverleaf submitted? Or has substantial use been made of the skill and labour which went into the creation of the original work? I bear in mind Lord Hodson's reference at 288 in Ladbroke to Peterson J's remark in the University of London case (at 610) that "there remains the rough practical test that what is worth copying is prima facie worth protecting." Of course that is not a test in itself or all copying, however insubstantial, would be an infringement. Lord Hodson quoted this sentence in the context of his own observation that, "The defendants are not, in my opinion, able to escape by saying that all that they have done is to give banal commonplace descriptions to matter which is common to all engaged in the business and that, even if they have copied, they have copied nothing of any significance."

The deputy judge was also referred to the following passages of Mr Justice Edwin Johnson's judgment in Pasternak v Prescott [2022] EWHC 2695 (Ch); [2023] FSR 9:

“[94] Turning to the principles which govern copyright protection, these derive partly from English case law, but also from international treaties which have shaped the UK copyright regime, as well as EU law through Directive 2001/29/EC (“the InfoSoc Directive”). This part of EU law remains a retained part of UK law.
…
[103] The effect of Infopaq and the concept of intellectual creation was considered by Lewison LJ in SAS Institute Inc v World Programming Ltd [2013] EWCA Civ 1482; [2015] ECDR 17; [2014] RPC 8. At [38] Lewison LJ explained the test for what is a substantial part, post Infopaq, in the following terms (underlining also added):

'Our domestic legislation confines the doing of a restricted act (e.g. copying) to doing that act in relation to the work as a whole or any “substantial part of it”: Copyright Designs and Patents Act 1988 s.16 (1), s.16 (3), Nova Productions Ltd v Mazooma Games Ltd [2007] EWCA Civ 219; [2007] ECDR 6; [2007] R.P.C. 25 at [29]. It has long been the position in domestic law that what is substantial is a question to be answered qualitatively rather than quantitatively. In Infopaq the court said that parts of a work are entitled to the same protection as the work as a whole. But the parts in question must 'contain elements which are the expression of the intellectual creation of the author of the work': [39]. This is now the test for determining whether a restricted act has been done in relation to a substantial part of a work. …
…
[105] Lewison LJ proceeded to quote from the Infopaq decision. He then identified what was meant by intellectual creation in the following terms, at [31]:

'The court has also considered what amounts to an 'intellectual creation' on a number of occasions. The essence of the term is that the person in question has exercised expressive and creative choices in producing the work. The more restricted the choices, the less likely it is that the product will be the intellectual creation (or the expression of the intellectual creation) of the person who produced it…
…
[107] The test of originality is therefore a qualitative, not a quantitative test. It seems to me that the post Infopaq test is usefully and succinctly stated by Zacaroli J in Sheeran v Chokri [2022] FSR 15, at [21] in the following terms:

'To amount to an infringement, however, the copying must be of either the original work or a 'substantial part' of it: s. 16 (3) (a) of CDPA. This is a qualitative, not quantitative, question. The test is whether the part in question contains elements which are the expression of the intellectual creation of the author of the work: Newspaper Licensing Agency Ltd v Meltwater Holding BV [2011] EWCA Civ 890, at [24]-[28], applying Infopaq International A/S v Danske Dagblades Forening [2009] ECDR 16; [2010] FSR 20. The essential consideration is to ask whether a defendant has taken that which conferred originality on the claimant’s copyright work (or a substantial part of it): Mitchell v BBC [2011] EWPCC 42, per HHJ Birss QC at [28]-[29].'"

The deputy judge agreed with Mr Justice Edwin Johnson's summary.

Mr Stone also considered para 4.50 of the 5th edition of Laddie, Prescott & Vitoria: The Modern Law of Copyright,  on three different scenarios of imitation which may constitute copying, namely: exact imitation of the whole of the work, exact imitation of part of the work, and inexact imitation:

“If the claimant's work is copyright (which implies that it is original) and the defendant has imitated it exactly, the latter must have infringed, unless he can establish one of the special defences available, eg fair dealing for purposes of private study, and so on. This case is therefore easy from a legal point of view. Again, if the defendant has not plagiarised the whole of the work but has imitated part of it exactly, say, the top left-hand corner of a painting, it is, in principle, easy to decide if he has infringed, that is, taken a 'substantial part': one inquires whether the part that was taken comprises the claimant's expression of his own intellectual creation. This case, therefore, is also fairly easy from a legal point of view. However, cases often present themselves where it can be seen that the defendant has by no means copied the claimant's work exactly. It is then necessary to decide on which side of the line the case falls. This line separates that degree of resemblance which is too general to count from that which is too close to be allowed. In such cases the defendant may argue that he has not taken the claimant's work, only his idea…”

The claimants provided Mr Stone with the side of a case that reproduced label 1 and a segment of Ms Martin's wall drawing for a side-by-side comparison. The deputy judge had no doubt that the first label was a copy, albeit a modified one. There were particular features of the work that were identically reproduced. In his judgment, that label was also very clearly a substantial reproduction of the wall drawing. Mr Stone said that label 1 had taken that which conferred originality on Found The Found’s copyright work or a substantial part of it.   Accordingly, the answer to Issue 3 was that the first label was a copy of a substantial part of Ms Martin's work.

Issue 4. - If yes, has the Second and/or Third Label been copied from the First Label, such that they or either of them constitute a substantial copy of the Work?

After Ms Martin complained to GM Drinks that label 1 infringed the copyright in her wall drawing on 12 April 2020, Mr Patch forwarded her complaint to Bodegas San Huberto and asked the winery to deal with it.   It appears that the winery instructed its designer to redesign the label.   He produced the second label, an image of which appears in para [5] of the transcript.   Although they conceded that that label was not an exact copy of Ms Martin's work, the claimants contended that it reproduced enough of her intellectual creation to infringe.   They pointed to features of her style and elements of her other works that were to be found in the label.

Mr Stone was not persuaded.   He directed himself at para [69] that the question was whether the second label had moved far enough away from the copyright work.  He directed himself that he had to decide on which side of the line that separates the degree of resemblance that is too general to count from that which is too close to be allowed that the second label fell.   In his judgment, the second label did not include any of Ms Martin’s intellectual creation. Where there were similarities, they were banal aspects of the language of drawing, such as lines, loops, dots, birds and suns and not lines, loops, dots, birds or suns as drawn by Ms Martin in the wall drawing, or as were particular to her work. 

The winery asked its designer to design a third label because of the claimants' criticism of the second label. The deputy judge compared the design that was produced to the segment of the original work against which he had compared the first and second labels.   He concluded at para [100] that the third label was even further removed from the wall drawing than the second:

"It is clear to me that the Third Label is far enough from the Work not to include any of Ms Martin’s intellectual creation. The Claimants have not pointed to any element of the Work (no matter how small) that has been copied exactly. The Third Label and the Work look different, and the various elements of it each look different to the elements of the Work. Ms Martin’s intellectual creation has not been taken. The Third Label is not a substantial reproduction of the Work. The Third Label does not infringe Found the Found’s copyright."

The answer to the fourth issue was that neither the second nor the third label constituted a substantial copy of the copyright work.

Issue 5. Does goodwill subsist in [T]he Style in the UK, including as generated by the endorsement of products sold by reference to the Style in the UK?

The deputy judge reminded himself of: 

• the House of Lords' ruling in Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341, [1990] UKHL 12, [1990] WLR 491, [1990] 1 WLR 491, [1990] 1 All ER 873 that a claimant must prove goodwill, misrepresentation and damage;
• the Supreme Court's in Starbucks (HK) Limited and Another v British Sky Broadcasting Group Plc and others [2015] 3 All ER 469, [2015] FSR 29, [2015] UKSC 31, [2015] 1 WLR 2628, [2015] ETMR 31, [2015] WLR 2628, [2015] WLR(D) 229, [2015] ECC 19  that goodwill must include customers in the United Kingdom:
• the Court of Appeal's in Harrods Ltd v Harrodian School  [1996] RPC 697, [1996] EWCA Civ 1315 that it is not necessary for a claimant to establish that the defendant consciously intended to deceive the public, if that is the probable result of the conduct; and
• Mr Justice Laddie's in Irvine v Talksport Ltd [2002] FSR 60, [2002] EWHC 367, [2002] EWHC 367 (Ch), [2002] 2 All ER 414, [2002] WLR 2355, [2002] 1 WLR 2355, (2002) 25(6) IPD 25039, [2002] EMLR 32 at para [38] that there is no need for the parties to share a common field of activity.

He referred to para [48] of Mr Justice Laddie's judgment in Irvine v Talksport Ltd:

“[T]here is nothing which prevents an action for passing off succeeding in a false endorsement case. However to succeed, the burden on the claimant includes a need to prove at least two interrelated facts. First that at the time of the acts complained of he had a significant reputation or goodwill. Second that the actions of the defendant gave rise to a false message which would be understood by a not insignificant section of his market that his goods have been endorsed, recommended or are approved of by the claimant…”

The deputy judge also referred to Lord Justice Kitchin's judgment in Fenty v Arcadia Group Brands Limited  [2015] WLR 3291, [2015] FSR 14, [2015] EMLR 12, [2015] 1 WLR 3291, [2015] EWCA Civ 3 which endorsed Mr Justice Laddie's approach at para [40].   Lord Justice Kitchin also said:

“[34]…. [I]t is enough that the goods provided by the defendant are represented as being in some way connected or associated with the claimant, provided that the connection is a material one in the sense that it has caused or is likely to cause the claimant damage in their business…
…

[43] So the claimant in a case of this kind must make good his case on the evidence. He must show that he has a relevant goodwill, that the activities of the defendant amount to a misrepresentation that he has endorsed or approved the goods or services of which he complains, and that these activities have caused or are likely to cause him damage to his goodwill and business…”

Finally, Mr Stone endorsed the following passages of Wadlow on the Law of Passing Off, 6th Edn (Sweet & Maxwell: 2016:

“5-249. It is passing-off for a trader to put into circulation goods which are inherently likely to deceive ultimate purchasers or consumers, even though the immediate purchasers may be middlemen who are not themselves deceived and even though the middleman may ultimately dispose of the goods in a manner which does not deceive anyone at all. The tort is complete when the defendant parts with possession of the deceptive goods, though actual damage to the claimant may not occur until later, if at all…
…
5-255. The law regarding inherently deceptive goods is clear. There is strict liability for putting into circulation goods which bear indicia sufficiently close to those distinctive of the claimant for deception to take place when those goods reach the market. It is no defence that the supplier may act honestly and innocently, nor that his immediate customers may not be deceived…
…
5-257. …Lord Greene confirmed that the tort was complete when the offending goods were sold to the middleman.

'The defendant in a passing-off action has in the normal case, the simple case, sold a quantity of deceptive goods. Those goods he may have sold direct to a member of the public, the ultimate purchaser, or he may have sold them to a middleman who is himself going to sell them to members of the public, or perhaps to some other trader who, in turn, deals directly with the public. The defendant has therefore put upon the market and sent into the market a quantity of goods which on the face of them, and ex hypothesi, are saying something about themselves which is calculated to mislead. That is the very gist of the conception of passing-off.'

5-258. Lord Greene went on to identify three categories of middlemen: those who did not realise confusion was likely and who would therefore take no special precautions to prevent it; those who would foresee confusion and take steps to make sure it did not take place; and those who would fail to do so because they intended to benefit from the possibility of confusion. The defendant’s liability did not, in principle, depend on which category his trade customers fell into. What happened after the goods left his hands was relevant only to the measure of damages, and that would be the same whether a particular dealer fell into the first category or the third.”

The deputy judge had no doubt that Ms Martin had at all relevant times the requisite goodwill in the UK to found an action for passing off.   He listed the following indications of goodwill at para [122]:

"i) In November 2016, Ms Martin participated in a special event at Tate Modern, London, showcasing her work;
ii) She had a solo show in London in 2021;
iii) Ms Martin has over 11,000 UK-based followers on Instagram, 20,000 followers on X (formerly Twitter); 50,000 subscribers on YouTube (where her videos have attracted thousands of views); 97,000 Tumblr followers and 70,000 followers on LinkedIn (not all these followers are UK-based, and not all relate to figures before the relevant dates, but they give some idea of Ms Martin’s breadth and depth of support);
iv) Ms Martin was awarded an honorary fellowship from the University of the Arts, London in 2024;
v) Ms Martin’s works are used to teach in UK schools;
vi) Since 2013, Ms Martin has commercialised her work by engaging in collaboration and/or endorsement agreements. Examples of endorsement deals which targeted the UK include:
a) Jose Cuervo in 2017;
b) Puma in 2018;
c) The North Face in 2020;
d) Absolut in 2020;
e) Liquid Icons in 2021 - Ms Martin was Artistic Director of the Golden Vines awards, with an event hosted in London;
f) The Financial Times in 2021 including an event in London; and
g) Grind Coffee in 2023."

The learned deputy judge noted at [123] that there was a question of what Ms Martin’s goodwill was in.  In her particulars of claim she claimed that it subsisted in "a distinctive graphic line-work style which renders her works instantly recognisable”, which was later defined as "the Style."  Mr Stone adopted that contention with the following qualification:

"[127]  ........ it seems to me that it is easier to demonstrate Ms Martin’s goodwill with images than with words. I have set out in this judgment numerous depictions of her work taken from the evidence. Her goodwill subsists in that work. Particularly, it seems to me that her work, overall, exhibits the following characteristics:
i) black line drawings on a white background;
ii) two-dimensional imagery, with an absence of perspective; and
iii) as described by Mr Duff, a “map-like” look, or patchwork with an unusual mix of humanoid faces with geographical features such as mountains.
[128] There is, of course, more to her work, and, as I have said, that simple description of what I perceive from the evidence to be the main aspects of it is not intended to offend Ms Martin. Quite to the contrary - her work is clearly highly successful. But it is easier to show it than to say it - the images I have excerpted in this judgment demonstrate Ms Martin’s work and the goodwill that attaches to it in the United Kingdom much better than my attempt to describe it."

In para [144], the deputy judge said that the answer to the fifth issue was that protectable goodwill subsisted in the UK in Ms Martin’s work (although not in The Style as defined in the particulars of claim), including as generated by the endorsement of products sold in the UK.

Issue 6  - Is the goodwill in paragraph 5 owned by Ms Martin?

In the same paragraph, Mr Stone said that the goodwill was owned by Ms Martin, having not been transferred to Found The Found.

Issue 7 - Have the Defendants misrepresented that their goods are connected in the course of trade with Ms Martin’s business

The claimants adduced evidence that two members of the public had bought wine with the first label in the belief that it had some connection with Ms Martin.  That was enough for Mr Stone to confirm his view that the first label was sufficiently close to Ms Martin’s work to create a misrepresentation that she had endorsed wine bearing the first label. He considered it very likely indeed that anyone "within Ms Martin’s goodwill" would consider that Ms Martin had endorsed or otherwise been associated with such a bottle.

GM Drinks had imported bottles with the infringing labels into the UK.  Mr Stone exonerated the winery from liability as it had undertaken no acts in the United Kingdom to which passing off could attach.  He did not think the second or third labels amounted to misrepresentations because he did not find them sufficiently similar to Ms Martin’s work or her definition of "The Style" for the following reasons:

"i) Neither the Second Label nor the Third Label includes any humanoid faces - as I have set out above, these are prevalent throughout the examples of Ms Martin’s work which were in evidence before me, and are, in my view, a significant contributor to her goodwill. They seem to me to be a large contributor to what she is known for;
ii) Neither the Second Label nor the Third Label is without perspective. In both labels, there is a traditional depiction of perspective, with the top of the label being the top of the view, and a clear sense of foreground;
iii) Neither the Second Label nor the Third Label includes the “map-like” or patchwork quality prevalent in Ms Martin’s work; and

iv) Whilst it is impermissible in a copyright case to consider what has been added to the allegedly infringing copy, it is essential for the law of passing off to look at the whole of the allegedly tortious product, including what has been added. Many of the elements of the Second Label and Third Label are not to be found in Ms Martin’s work at all, including the clear indicia of wine-making (such as barrels) and what were said to be indicia of Argentina (such as cacti and llamas). These serve to distinguish the Second and Third Labels from Ms Martin’s work and The Style (as defined)."

Mr Stone also said in para [144] that GM Drinks had misrepresented that the first label bottles were connected in the course of trade with Ms Martin’s business,  

Issue 8 -  If so, has such misrepresentation caused Ms Martin damage?

Ms Martin claimed:

"i) the actual loss suffered in respect of the revenue which Ms Martin would have been able to receive from her licensing/endorsement business;
ii) the likely reduction in Ms Martin’s ability to attract endorsement deals in the wine and alcohol sector; and
iii) damage to the distinctiveness of Ms Martin’s signature Style."

Mr Stone accepted that Ms Martin was likely to have suffered loss or damage under the first and third heads but not the second and he did not try to quantify the amount due.   He said at [144] that GM Drinks's misrepresentation was likely to have caused Ms Martin damage to her existing licensing/endorsement business and to the distinctiveness of her signature style.

Issue 9 - Are the Defendants or any combination of them joint tortfeasors in respect of (i) copyright infringement, and (ii) passing off, such that they are jointly liable for any of the acts alleged?

The learned deputy judge referred to the following paragraphs of the Supreme Court's judgment in Lifestyle Equities CV and another v Ahmed and another  [2024] Bus LR 1438, [2024] RPC 14, [2024] UKSC 17, [2025] AC 1, [2024] WLR(D) 233, [2024] ETMR 32, [2024] 2 WLR 1297:

“[135]. To summarise, there is a general principle of the common law that a person who knowingly procures another person to commit an actionable wrong will be jointly liable with that other person for the wrong committed. The liability of the procurer is an accessory liability. Where the primary wrong is a breach of contract, this accessory liability takes the form of a distinct tort. Where the primary wrong is a tort, however, there is no need to posit a separate tort of procuring another person to commit a tort. Where the general principle applies, the procurer is made jointly liable for the tort committed by the primary wrongdoer.
[136] There is a further, distinct principle of accessory liability by which a person who assists another to commit a tort is made jointly liable for the tort committed by that person if the assistance is more than trivial and is given pursuant to a common design between the parties. On the facts of a particular case both principles may be engaged. But on the present state of the law assistance which falls short of procuring the primary wrongdoer to commit the tort cannot lead to liability unless it is given pursuant to a common design.
[137] Although procuring a tort and assisting another to commit a tort pursuant to a common design are distinct bases for imposing accessory liability, they must operate consistently with each other and such that the law of accessory liability in tort is coherent. Considerations of principle, authority and analogy with principles of accessory liability in other areas of private law all support the conclusion that knowledge of the essential features of the tort is necessary to justify imposing joint liability on someone who has not actually committed the tort. This is so even where, as in the case of infringement of intellectual property rights, the tort does not itself require such knowledge. As Paul Davies says in his excellent book on Accessory Liability (2015), p 211: ‘Strict liability might suffice for the primary tort but should not be sufficient for accessory liability.'"     

Neither Mr Patch nor Bodegas San Huberto knew of Ms Martin or her work before she complained of copyright infringement to GM Drinks on 13 April 2020.  It followed that neither defendant had the requisite knowledge to be liable as accessories to issuing copies of the work to the public under s.18 or passing off until after that date.  Mr Stone held that Mr Patch and the winery were liable as joint tortfeasors under both s.18 and s.22 and s.23 (a) and (b) after 13 April 2020 in respect of wine in first label bottles.  There were approximately 5,880 such bottles.  He found that neither Mr Patch nor the winery was liable for passing off because they were unaware of Ms Martin's goodwill (as opposed to reputation) until after the label 1 bottles had been sold.       

The answer to the 9th issue was that both Mr Patch and Bodegas San Huberto were jointly liable with GM Drinks for copyright infringement in respect of the first label bottles after 13 April 2020 but not for passing off.                                                                                                                                                                                                                                                                                                                                    

Moral Rights

S.77 of the Copyright, Designs and Patents Act 1988 provides as follows:

"(1) The author of a copyright literary, dramatic, musical or artistic work, and the director of a copyright film, has the right to be identified as the author or director of the work in the circumstances mentioned in this section; but the right is not infringed unless it has been asserted in accordance with section 78…
…
(4) The author of an artistic work has the right to be identified whenever—
(a) the work is published commercially or exhibited in public, or a visual image of it is communicated to the public;…"

Ms Martin argued that GM Drinks had infringed that right.  The deputy judge refused to entertain that argument because the issue of whether such right subsisted and, if so, whether it had been infringed had not been listed for trial at the case management conference.   However, he said at para [116] that Ms Martin had asserted her right in accordance with s.78 by signing the wall drawing and claiming authorship in her email of 13 April 2020.  As the wine in the first label bottles that had been distributed after 13 April 2020 did not carry an acknowledgement of Ms Martin's authorship, she would have succeeded on the point had she been allowed to run it.

Flagrancy

The claimants claimed additional damages for copyright infringement under s.97 (2) of the Copyright, Designs and Patents Act 1988 and passing off under reg 3 of  The Intellectual Property (Enforcement, etc) Regulations 2006 (SI 2006 No 1028).   As neither of those issues had been listed for trial at the case management conference, Mr Stone did not consider them.  Had he been required to do so he would not have made an award.    He said at [162]:

"..........  I do not consider that the infringement I have found in this case was flagrant, and an award of flagrancy damages, even a small award, would not, in my judgment, be just in all the circumstances of the case. I do not consider an award of additional damages to be “effective, proportionate or dissuasive” in this case. As I have set out above, GM Drinks was unaware of Ms Martin, her work, or the Work until 13 April 2020. Whilst approximately 5,880 bottles may have been dealt with thereafter, these had already been purchased from BSH. There was nothing in the dealing of them that warrants any moral or other opprobrium, or requires damages other than those which would put the Claimants into the position they would have been in but for the infringement."

Comment

Most of the restricted acts that fall within s.16 (1) of the Copyright, Designs and Patents Act 1988 do not require knowledge of an infringement or reason to believe for the very good reason that the copyist, performer or translator usually knows precisely what he or she is doing.   Issuing copies to the public is more problematic because it is possible to infringe quite innocently.  Mr Stone noted at para [45] that Mr Patch did no intellectual property clearance, but it is not clear what he could have done as copyright is an unregistered right.  While it is possible to carry out a patent, trade mark or registered design search in this country there is no register of copyright works.   

A similar issue arose in Infabrics Ltd and others v Jaytext Ltd [1982] AC 1.  That case was decided in accordance with s.3 (5) (b) of the Copyright Act 1956.   According to the headnote, the House of Lords held that:

"in respect of the publication of an artistic work the words "publishing the work" in section 3 (5) (b) of the Copyright Act 1956 meant making public in the United Kingdom or other country to which the Act extended a work hitherto unpublished in that territory; that, accordingly, since the plaintiffs had failed to establish that the design was unpublished when the defendants put their shirts on sale, the plaintiffs were unable to establish that the defendants' sales were a "primary" infringement under section 3 (5) (b)."

Nobody seems to have mentioned that authority to the deputy judge which is probably because the defendants were unrepresented.

Mr Patch complained that he and his company had been thrown under a bus.   Sometimes it is possible for a distributor to rely on the implied term as to title under s.12 of the Sales of Goods Act 1979 subject, of course to subsection (3) of that section.   It may also be possible to insure against liability to third parties,

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