January 2023 News

Cut from a different cloth

Cut from a different cloth

This month, we have a note from my colleague Hazel MacLean, who joined us new to the world of intellectual property and has since qualified as a trade mark attorney.  That entitles her to act on behalf of clients in the UK courts, in relation to IP matters, and here is the tale of her first foray into litigation.

Hazel writes:
One of our clients designs and manufactures fabrics which are incorporated into mattresses and bedding. Unfortunately, they discovered copies of their fabrics on mattresses in a handful of UK furniture stores. Despite putting in the time, skill, and effort to design fabrics that would look good and sell successfully, these shops were selling products covered in our client’s designs and our client was not receiving a penny of the profits.

When someone copies your work the first thing to establish is what protection you have. In many cases Intellectual Property needs to be registered to be protected, but in the UK copyright arises automatically in the right circumstances. The fabric designs were original artistic works created by our client, and as a result they enjoy a long term of copyright protection from the day they were created.

Once we established that the fabric designs had copyright protection (one of the designs illustrated to the left) we contacted the manufacturer to find out who had sold them the copycat fabric and demanded that they stop using it themselves. The manufacturer would have soon seen the back of us had they cooperated but alas, they buried their heads in the sand and ignored everything we sent. When we threatened to take them to Court… nothing. When we filed the case with the Court… still nothing. Note: if someone threatens to take you to Court it is sensible to get legal advice to try to sort the matter out, it certainly would have saved this manufacturer a lot of money, hassle, and bad press. The result of ignoring the problem? The Court decided the case in their absence with everything decided in our client’s favour: the manufacturer was knowingly infringing our client’s copyright and they had to stop. 

After being served the Court Order the manufacturer quickly found legal representation (better late than never). As well as ordering the manufacturer to stop buying or selling any more copies of the fabric, the Court also mandated that the manufacturer destroy any remaining fabric at their own expense, pay our client’s costs, and provide us with all the information we had requested at the beginning. This time the manufacturer was well advised and swiftly complied.

With the information on the supply chain we began tracking down the manufacturer’s customers and retailers who were selling mattresses made with the infringing fabrics. Some were cooperative and withdrew the products… others not so much. One unscrupulous retailer massively understated the number of mattresses covered with the infringing fabrics in their shops, and claimed they no longer sold them. Our client was not convinced, so we engaged a Private Detective to peruse these stores and report back. The Private Detective helpfully recorded conversations with sales staff trying to shift the infringing products quickly- and our client was soon driving a lorry around the country collecting mattresses directly from the shop floors of the (now very red-faced) retailer.

We also traced the supply chain to the original company that copied one of our client’s fabric designs so our client is now able to tackle the source of the problem. Sadly, manufacturers we spoke to confirmed copying is standard practice in the industry. We have educated a few companies in the process of this case who now know they should check they are buying and selling legitimate products and whether they are purchasing from a legitimate company. The robust action our client has against suppliers, manufacturers and retailers sets a strong example to this trade that the age of copying is over.

So what did our client do right when protecting their design work?

•    Seeking advice. Find out if you have intellectual property rights you can use to protect your work and what kind of notices you can include on your work to deter copycats.
•    Contacting the copycat. In many cases if you find someone using your copyright work without permission it is sensible to notify them, if they are not the original copycat this starts the clock ticking so that any of their future sales are then conscious infringements of your copyright.
•    Not stopping until the copycats do. Go after the copycats and trace the supply chain. 
•    Telling your story. If copying is standard practice in your industry then try to educate any copycats you encounter and publicise the results of cases if you have taken action against a dishonest traders.
As for manufacturers, suppliers, and retailers you should perform your due diligence and protect yourself by:
•    Asking your suppliers to confirm that their products are sourced from the original designer, or that they have the copyright owner’s permission to use their designs.
•    Agreeing with your suppliers that they will refund you, or be liable to reimburse your costs, if the products they supply turn out to infringe somebody else’s Intellectual Property rights.
•    Keeping good written records of your company’s purchases.

If you are worried about your work being copied or want to protect yourself in an industry where copying is rife, please give us a call and we will be happy to discuss what can be done to protect your work and your business.

Until next time.

Best Wishes

Michael and Hazel

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