"The dragon is a creature of myth, dating back to ancient times and found in cultures across the world". This is the opening line of the recent UK IP judgment Fay Evans v PLC and DBB UK.
The John Lewis Christmas ad
Image source: Wikimedia commons
John Lewis is a famous UK department store. The company has a reputation for impressive Christmas ads. But the 2019 John Lewis Christmas ad received more attention than expected. This is because the ad resulted in IP litigation.
The 2019 Christmas ad featured a dragon known as Excitable Edgar, a creature who seemingly finds it difficult to curb his fire-releasing-abilities. A trait, we're told, that gets Edgar into all sorts of scrapes. Edgar is a bit of a lovable rogue!
An allegation of copyright infringement
When John Lewis launched the Excitable Edgar ad, it was met with a claim of copyright infringement. The claim was brought by the author Fay Evans, who argued that the John Lewis ad infringed the copyright in a book that she had published in 2017, Fred the Fire-Sneezing Dragon. The claim of copyright infringement is related to both what copyright law refers to as "literary" and "artistic " works (so, words as well as drawings).
Not only did Fay Evans sue John Lewis, but she also joined the company's advertising agency, adam&eveDBB, as a party to the proceedings.
John Lewis vigorously defended the claim of copyright infringement. It told the court that it had "pitched ideas" about a "lonely dragon" a year before Ms Evans' book was released. The company claimed that it did not know about Ms Evans' book and that it had not copied the book. It went even further – it brought a counterclaim against Ms Evans seeking a declaration of non-infringement, and an order requiring her to publicise the court's judgment if her claim against John Lewis was unsuccessful.
There must be copying
Copyright differs from some other IP rights in the sense that it is not an absolute right. With copyright, there can only be infringement if there has been actual copying, and coincidental similarity or identity is not sufficient.
Judge Clark ruled that there had been no copyright infringement by John Lewis because the contested "work" (the John Lewis advert) had been created independently of the earlier "work" (the book Fred the Fire-Sneezing Dragon).
The judge said this: "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 (ie, seen, in this case) by those said to have copied it." The judge added that access could be proven either directly or inferred from other circumstances in the case.
More on access
On the issue of access, the judge held that it was not possible to infer that the work had been accessed and therefore copied by John Lewis. The reason: the similarities were few, and they could easily be "explained by coincidence rather than copying". John Lewis did not have access to Fred the Fire-sneezing Dragon so there had been no copying.
Onus of proof
Judge Clark made the point that the onus of proof is on the plaintiff, who must establish sufficient similarity between the two works, as well as access to the work by the alleged infringer. But once sufficient similarity and access have been established, the onus shifts to the defendant to prove that there was no copying, in other words, that it was created independently.
The need to consider differences as well as similarities
The judge referred with approval to the earlier case of IPC Media Ltd v Highbury Leisure Publishing Ltd where the court said that parties to a copyright dispute should not only consider the similarities between the works but also the differences because a pure focus on the similarities can result in incorrect findings.
In an unusual move, the judge ordered Fay Evans to publicise this judgment on her website and social media accounts and declare non-infringement. The judge reasoned that this was appropriate following the media campaign that had been waged against John Lewis.
This is an unusual and important judgment. One that reminds us of the need to keep records of pitch documents and the evolution of ideas. And also to remember the basics – copyright infringement requires copying, it is not an absolute right.
Reviewed by Ilse du Plessis, an Executive in the ENSafrica IP department
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