Can copyright protection subsist in a make-up powder?

Can copyright protection subsist in a make-up powder? This was the question recently considered by the UK High Court. Charlotte Tilbury's Filmstar Palette was in the spotlight when Isletarr Holdings Limited (Islestarr) filed proceedings against Aldi for its similar powder designs.

Islestarr, who launched the make-up brand in 2013, claimed that Aldi had infringed their copyright in respect of the design on the lid of the packaging (the Starburst Design) and the design embossed on the two separate make up powders inside the package (the Powder Design). Tilbury's palette retails for £49 and Aldi's for £6.99 (later reduced to £4.99).

The two main issues addressed in the case were:

• ownership of the copyright works
• whether a copyright work exists in something ephemeral and transient in nature.

Ownership

The Court scrutinised the legitimacy of an assignment of copyright works in the Starburst Design from the design agency, Made Thought Design Limited, to Islestarr. There was only an oral agreement between Islestarr and Made Thought which could not transfer legal title.

Fees paid for Made Thought's work were argued to be past consideration which made the assignment ineffective. Islestarr argued that the assignment was made by way of deed, meaning that no consideration was needed.

A further issue for the Court was whether the individual designing the Starburst Design had been an employee of Made Thought (he was a director and did not have an employment contract).

It was found that the designer was employed by Islestarr, meaning that the company had established ownership in the Starburst Design.

Subsistence

The Deputy Judge looked at whether copyright could exist as an artistic work in the Powder Design since use of the make-up changes the appearance of the Powder Design.

Comparisons were made by the Deputy Judge to people who make sculptures out of sand and the creator of a bespoke wedding cake.

Neither are lasting and both are temporary works. However, both should be able to obtain copyright by virtue of a sketch or photograph of the completed work.

The Powder Design was found to be a 3D reproduction of a 2D object, being the drawing. The fact the design disappears and changes appearance through use of the product does not affect or remove the copyright protection of the artistic work.

Result

Aldi was aware of the Islestarr palettes at the time of creating their own palettes from a trade show in July 2018. The burden then moved to Aldi to prove that the similarities in design did not result from copying.

Based on the assessment of copyright infringement from the leading case, Designers Guild, the similarities were substantial from a quantitative and qualitative perspective. Copyright infringement was found.

The Deputy Judge held that Aldi had no real prospect of successfully defending Islestarr's claim for copyright infringement of each design.

Commentary

The UK courts have confirmed that permanent fixation is not required for artistic works, as suggested in cases such as Metix v Maughan [1997] FSR 718. Although fixation per se is not fundamental, it seems that just some sort of fixation is necessary for an artistic work (as opposed to literary, dramatic or musical works).

This also follows the CJEU definition of a "work" in Levola Hengelo C-310/17: "expressed in a manner which makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily permanent in form".

This case is also an important reminder of drafting and executing valid assignments especially when working with contractors and design agencies. A clear chain of title to any IP right remains essential.

Case Ref: [2019] EWHC 1473