UK: Snaps, Specs And Supermarkets — Recent 'Soft' IP Cases

Last Updated: 21 May 2012
Article by Sarah Innes

Snaps: Temple Island Collections Ltd v New English Teas [2012] EWPCC 1

A case causing somewhat of a stir in the world of copyright law at the moment is the recent Temple Islands case about photographs of a bright red routemaster bus. The case was heard in the Patents County Court by His Honour Judge Birss QC. The Claimant's photograph was of a bright red bus with the Houses of Parliament and Big Ben in black and white in the background and Westminster Bridge, and the river in black and white in the foreground. The photograph used by the Defendant on its souvenir products was also of a bright red bus on Westminster Bridge but was taken from a different angle with a smaller part of the Houses of Parliament and Big Ben in black and white in the background, and the arches of the bridge and the river were not visible in the foreground. The two photographs were therefore not identical but did share a number of common elements.

Judge Birss found that the Defendant's photograph infringed the Claimant's copyright in its photograph. Some commentators have expressed surprise at the decision and its potential impact on what is known as the idea/expression distinction. The English Courts have recognised in copyright cases that a line should be drawn between the idea behind a work, which tends not to be protected by copyright, and the expression of that idea, which can be protected.

It had been thought that the general layout of a photograph, particularly where that photograph consisted of a public building or setting, fell more toward the 'idea' end of the scale and would not be protected by copyright. A photographer could therefore recreate a photograph taken by another to produce a similar image because it was the underlying idea that was being copied (as it were), rather than the expression of it. The recreated image would not be a 'copy' as the taking of the photograph would itself require the necessary creative input to make it 'original'.

Following the present case, that may have changed and the scope of protection for photographs may have been broadened. Having said that, it appears the Defendant is seeking permission to appeal the first instance decision, so we await with interest to see if the Court of Appeal picks up the case, and whether or not the appellate Court agrees with Judge Birss.

Specs and Supermarkets: Specsavers v Asda Stores [2012] EWCA Civ 24

The long running battle over the branding used by Asda for its in-store opticians has now reached the Court of Appeal, which handed down its judgment at the end of January.

Asda re-launched its in-store opticians in 2009 using the slogans "be a real spec saver at Asda" and "Spec savings at Asda" as well as a logo which comprised two abutting white ovals on a green background with the words "Asda Opticians" in green over the ovals. Specsavers objected on the grounds of its trade mark registrations for, amongst other things, "Specsavers" and a logo comprising overlapping ovals which it uses in a green colour.

An interesting aspect to this case is the impact of Asda's decision to "live dangerously". It seemed clear that Asda initially intended to parody Specsavers' branding but, ultimately, decided not to do this. Nevertheless, the process for designing the branding to be used by Asda started with something close to that used by Specsavers and evolved over time to branding that it considered to be a safe distance away from Specsavers though still, in the Court's view, capable of bringing to mind or implicitly drawing a comparison with Specsavers.

In the end this tactic was Asda's saviour in one sense but its downfall in another. In relation to the infringement claims brought against Asda under Article 9(1)(b) of the CTM Regulation, where a likelihood of confusion is a necessary element, the Court's view seemed to be that Asda's strategy indicated that it did not want to cause confusion between it and Specsavers. When the slogans and logos it has used were considered in context, it was clear that although Asda may have wished to allude to Specsavers in its campaign, it also wanted to distinguish itself from Specsavers and did not want customers to be confused. The Court of Appeal suggested that in taking the decision to live dangerously, Asda has appreciated the risk of confusion and endeavoured to adopt a sign which was a safe distance away.

However, it was a different story with regard to the infringement claims brought against Asda under Article 9(1)(c) of the CTM Regulation, where it was argued that an unfair advantage existed. The Court of Appeal overturned the judgment of the first instance judge on this point and held that Specsavers' marks had been infringed. It found that Asda had used the concept of Specsavers as a value provider and that it intended to benefit from the power of attraction attaching to the Specsavers brand and to free-ride on Specsavers' marketing efforts. Asda's advertising campaign created a link in consumers' minds between it and Specsavers, this link gave Asda an advantage and that advantage was unfair, therefore the marks were infringed.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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