“The dragon is a creature of myth, dating back to ancient times and found in cultures across the world”. It is with this mesmerising sentence that Judge Clarke begins her judgment and welcomes another copyright case into her courtroom.
Sitting in the Intellectual Property Enterprise Court (IPEC) she addressed an allegation of copyright infringement brought against one of the UK’s best known department stores – John Lewis – by a self-published children’s book author.
Background to the dispute
John Lewis is known for many things, from its high-end goods, such as duck-feathered pillows and fine dishware, to its annual Christmas adverts. Its annual adverts are known for their festive warmth and creativity and inspire significant public commentary.
In 2019, John Lewis released a Christmas advert which depicts a dragon by the name of Excitable Edgar. Edgar is “an excitable young dragon who can’t help releasing fire” and gets into comical mischief as a result.
Fay Evans is an author of the children’s book titled “Fred the Fire-sneezing Dragon” which follows a dragon character who also struggles to master his fire-breathing abilities. Ms Evans claimed that John Lewis and the second defendant “adam&eveDBB” (the creative agency behind the advert) infringed the copyright in her literary and artistic works in her book “Fred the Fire-sneezing Dragon”, including rights of copyright in the principal character of the young dragon, Fred.
Key questions before the IPEC Judge
After agreeing that literary and artistic works existed in the “Fred the Fire-sneezing Dragon” book and were owned by Ms Evans, the judge had to consider whether the defendants have copied the work. The case turned on this question of whether conscious copying had occurred.
Judge Clarke referred to the well-established test of copyright infringement in cases of conscious copying to ascertain the answer to his question. The test is structured as a multifactorial assessment that requires the court to go through ordered steps to reach its conclusion as to whether copying took place or not.
Firstly, the starting point is that the legal burden rests with the person alleging infringement; in this case this was Ms Evans. Ms Evans had to furnish (i) proof of sufficient similarity between the works and (ii) proof of access by the defendant to the work.
Secondly, if the first hurdle is met by the claimant a rebuttable presumption of copying arises. The evidentiary burden then shifts to the defendants who now face the task of rebutting the presumption that they have copied the work. They will need to prove that they have created their work independently.
Addressing the first step then, what does “proof of access” to the work exactly mean?
To answer this, Judge Evans cited the recent decision of Zacaroli J in Sheeran v Chokri [2022] EWHC 827 (Ch). Namely, what is required is proof of actual access to the work by the defendant, not proof of mere possibility of access. She answered this question in the following way:
“…the question for the Court is whether there has been actual copying, and that requires access and not just the possibility of access. However, that access may either be evidenced directly, or it may be inferred from the possibility of access and other circumstances in the case.” [45]
The ruling
On the weight of evidence, it was found that no inference could be drawn that the claimant’s “Fred the Fire-sneezing Dragon” work was accessed and copied by John Lewis and the second defendant.
Firstly, the similarities between the “Fred the Fire-sneezing Dragon” on the one hand and the 2019 Advert and character of Excitable Edgar were “so few in number and can easily be explained by coincidence rather than copying”. The timeline of events and witness statements attesting to the creative process that led to the creation of the 2019 Advert and the Excitable Edgar character did not support an inference of the work being seen and copied by the defendants. On the balance of probabilities, it was found that the defendants did not have access to “Fred the Fire-sneezing Dragon”, so there can have been no copying.
Under the application of the infringement test, the first hurdle was not satisfied by Ms Evans as the court was not convinced that similarity between the works existed and that the circumstances could lead to an inference that the defendant had the requisite access to Ms Evans’ work. No rebuttable presumption of copying arose.
“There can be no copyright infringement without copying, and there can be no copying if the work alleged to have been copied has not been accessed (i.e. seen, in this case) by those said to have copied it.” [16]
Comment
This case adds to the history of cases, dating back to the case of Francis Day & Hunter Ltd v Bron and stretching ahead to the recently decided Sheeran v Chokri case, which uphold the longevity of the legal test of copying for the purposes of copying infringement.
It is yet another stark reminder that the legal test of ‘copying’ is not as simple as might seem at first glance.
More information
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