John Kaldor v Lee Ann Fashions

Fabric Not Copied

November 2014

Landmark decisions such as Stoddard International plc v William Lomas Carpets Ltd and Designers Guild Ltd v Russell Williams (Textiles) Ltd were revisited last week when his Honour Judge Hacon considered whether fashion garment maker, Lee Ann, had infringed the copyright and unregistered Community design of fabric house, John Kaldor, in relation to a dress supplied to Marks & Spencer; John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions Ltd [2014] EWHC 3779 (IPEC) (21 November 2014).

In 2012 John Kaldor supplied Lee Ann with a sample of the so-called “JK Fabric” (annex 1 below) while Lee Ann was pitching for M&S’s Per Una collection.  Lee Ann won the M&S contract, although the JK Fabric was never used.  The following year John Kaldor become aware of a dress for sale in M&S and alleged that the fabric used was merely a re-work of the design previously supplied to Lee Ann, and thus an infringement of the JK fabric had occurred.

The issues on which the Court had to decide were whether Lee Ann copied the design of the JK Fabric in creating her “LA Fabric” (annex 2 below) and, if so, in relation to copyright, whether Lee Ann copied a substantial part of the design; and, in relation to unregistered Community design, whether the design of the LA Fabric produced on the informed user a different overall impression to that of the JK Fabric. 

JK/LA Fabric

(Reproduced from the judgement)

In making these decisions, the Court considered a detailed list of intricate similarities pleaded by John Kaldor, relating to lines, patterns, contours, colours, shapes and dimensions of the fabric created by Lee Ann’s designer, Mrs Vance.  Three possible hypotheses of “conscious copying”, “sub-conscious copying” or “indirect copying” were proposed by John Kaldor, all of which revolved around the extent to which Mrs Vance had been aware of the JK Fabric and incorporated its details into her design.

Mrs Vance could not remember seeing the JK fabric and there was no direct evidence to suggest that she had singled it out from the many other fabrics supplied at the time.  Indeed, Mrs Vance claimed that she came up with the design herself, based upon a design brief from her manager requesting a “tribal look”.

In considering the possibility of unconscious copying, Judge Hacon stated that such an argument could only be sustained by a strong inference of copying from similarities between the two designs; similarities which he did not find sufficiently compelling in this instance.

It was held that Lee Ann did not copy the JK Fabric in creating the LA Fabric so the question of whether a substantial part was copied did not arise.  Hence, the claim of an unregistered Community design infringement was also invalid.  The claims for both infringement of copyright and infringement of unregistered Community design were dismissed.

This case serves as a reminder of the importance in keeping evidence during the creative process.