Luxury make-up brand Charlotte Tilbury, reported to be one of the Duchess of Sussex’s favourites, has obtained summary judgment against Aldi for copying its powder designs. The case[i], heard by Deputy Master Linwood in the High Court, illustrates the usefulness of copyright for brand owners in look-alike disputes: copyright can offer protection without the need to show customer confusion, which often causes evidential difficulties (and increases costs) in passing off actions.
“Like brands only cheaper”
Islestarr Holdings, the exclusive licensee of the Charlotte Tilbury trade mark and logo, argued that make-up palettes advertised by Aldi under the slogan “like brands only cheaper” infringed Islestarr’s copyright in two artistic works, the “Starburst Design” an art-deco style sunray design appearing on the lid of a Charlotte Tilbury palette of two powders and the ‘debossed’ designs on the powders themselves. These debossed designs were 3D designs appearing on the top of the powder when you opened the lid and which were worn away as you used the powder. Whereas the Charlotte Tilbury product was retailing at £49, Aldi’s product cost £6.99, later reducing to £4.99.
Did copyright subsist in the designs?
Aldi argued that Islestarr’s designs were too generic to attract copyright. The Court disagreed: although there was a clear art-deco inspiration, for example in the use of sunrays, there was no exact copying and the artists had made their own and/or joint intellectual choices in creating the designs. The designs therefore met the originality standard for copyright. Aldi also argued that the ‘debossed’ powder design would be worn away and so did not meet the requirement of fixation required to attract copyright protection. Deputy Master Linwood had no hesitation in rejecting this argument pointing out that the powders were a three-dimensional reproduction of a drawing. He also made an analogy with sand sculptures and wedding cakes in which he said copyright could subsist even though they were washed away or eaten.
The need for the claimant to show ownership of the legal title to the copyright can often be problematic in copyright actions and this issue seems to have taken up considerable court time – and presumably costs – in this case, although Islestarr was eventually successful in convincing the court that “on the balance of probabilities” it owned copyright title. In order to establish title copyright owners generally need to be able to demonstrate to the court either that the designs were produced by employees in the course of their employment (a rule of thumb is to ask whether they are paid through PAYE and whether it is their job to design) or that a valid written assignment has been entered into.
In accordance with well-established case law the Court compared the original and the alleged infringing designs, noting the similarities and the differences. It held that the similarities were substantial, both quantitatively and qualitatively and that the elements taken were not unoriginal or commonplace. It was clear also that Aldi’s designers had had access to the Charlotte Tilbury designs so that they could have copied. In these circumstances it was up to Aldi to satisfy the court that the similarities did not result from copying. They were unable to do so and the Aldi designs were held to infringe.
Impact of the case
The sale of cheaper look-alikes by popular stores such as Aldi can of course cause considerable financial and reputational damage to luxury brands. This case is a good example of the use of copyright as a tool in such a dispute. It will be seen from the above that the originality threshold for the subsistence of copyright is relatively low so that subsistence of copyright is often fairly easy to establish. Copyright owners should be aware, however, that in cases where the design field is crowded with designs in a similar style, protection will be narrow making the design relatively easy to design around: the more genuinely original the design, the broader the protection. Copyright may of course be run in parallel with passing off – this was initially the case here, but the passing off action was discontinued; the case report does not make it clear why. A further practical point is that whereas when the supermarkets produce look-alike versions of household goods such as mayonnaise and baked beans the brand owner’s desire to enforce its rights may be tempered by the risk of the supermarket refusing to stock the original branded product, this conflict does not arise in the case of luxury goods of this kind.
[i] Islestarr Holdings Ltd v Aldi Stores Ltd  EWHC 17.06.19