All Prettied Up - UK High Court Considers Copyright Protection in Physical Make-up Palette

Copyright protection in physical objects is a topic that one rarely sees being litigated, as many other avenues simply function better in the physical realm when dealing with possible infringers (such as passing off). Even so, a recent case piqued the curiosity of many IP practitioners and has shed some light on the topic of copyright in physical objects, and particularly ones with 'transient' designs that only last for a limited time. The High Court in the UK had a tall order to consider and handed down its judgment only a few months ago.

The case of Islestarr Holdings Ltd v Aldi Stores Ltd concerned the make-up brand Charlotte Tilbury, owned by Islestarr, who developed a make-up palette called the "Filmstar Palette". This incorporated two pieces of make-up – the Filmstar Bronze and Glow – organized in a metallic-looking box, including debossed sun rays running across the two pieces of make-up. The Palette was very successful in the marketplace, and due to its success, Islestarr alleges that Aldi subsequently copied the design in their cheaper palette sold in Aldi stores. Islestarr subsequently brought in a claim against Aldi and ultimately sought summary judgment for copyright infringement, which Deputy Master Linwood dealt with in their judgment.

Deputy Master Linwood started with summarising the law underpinning the matter. In brief, copyright can only subsist in specific types of work, provided they are original. A work is deemed original if the work is the author's "…own intellectual creation or independent skill and effort", which includes taking inspiration or influence from other works.

Whether a copyright-protected work is infringed, the courts have to assess whether all or a substantial part of the work has been copied by the other party. Even if deliberate variations or alterations are made to the work, it does not necessarily mean that it hasn't been copied. Often this assessment is made through a visual (or other) comparison of the works, noting similarities and dissimilarities. Once all of the above has been established, the court can make a determination on whether the copying has been substantial or not, focusing on the quality or the copying and not merely the quantity.

The Deputy Master then moved onto dealing with the issues of the matter, i.e. whether copyright subsists in the work; whether the alleged infringing designs were indirectly derived from the copyright works; and whether the alleged infringing designs reproduce a substantial part of the copyright works.

Some temporary works are definitely cooler than others

In considering whether copyright subsisted in the debossed make-up, the Deputy Master quickly saw that it did indeed attract copyright protection, even though the subject matter was merely 'temporary'. He noted that if no copyright subsisted in the palette, that no protection would be given to "...sculptures [made] out of sand at low water on a tidal beach... a pre-construction sketch or photograph of the completed work... [or] a bespoke wedding cake".  The transient nature of the work clearly doesn't impact the copyright protection it is given. Additionally, the Deputy Master saw no issues in the originality of the work, which was created by employees of Islestarr, even though the creators might've been aware of prior art in the make-up palette sector, and was clearly an original work of their author's intellectual creation.

The Deputy Master then moved onto the matter of infringement. He initially looked at the similarities and differences between the two palette designs, and ultimately concluded that the similarities are substantial from both a qualitative and quantitative point of view. Aldi additionally admitted that the designers of their palette had access to the Islestarr design at the time of production. The Deputy Master quickly determined that Aldi had indeed infringed on Islestarr's copyright in the palette design, as Aldi offered no valid defence to refute the burden of proof on them not copying the design.

Aldi, therefore, were determined to have infringed Islestarr's copyright in the palette.

The case is a very interesting one, particularly relating to the point of the transience of the design Islestarr had. It makes perfect sense to this writer since the dismissal of more 'temporary' designs from the remit of copyright would allow for many designs or works to be blatantly copied if they are not permanently fixed in some way. The decision is a firm reminder that copyright is a very wide form of IP, and the case will undoubtedly pave the way for many more similar cases to be brought against infringers in the future.