Brand owners suffering from others producing lookalike or discounted versions of their products should take heart from the High Court’s decision in Islestarr Holdings Ltd v Aldi Stores Ltd [2019] EWHC 1473 (Ch).

Islestarr own make-up brand Charlotte Tilbury has succeeded in convincing the High Court that Aldi had infringed their copyright in two artistic works.

Aldi had created a “Broadway Shape and Glow” make-up palette which cost just £6.99 and was held to be a copy of Charlotte Tilbury’s “Filmstar Palette” makeup palette which retailed for £49.

Islestarr argued that their palette included two artistic works, “the ‘Starburst Design’, which decorated the lid of a package containing two makeup powders and secondly, the ‘Powder Design’, which is embossed into each of the two separate makeup powders in the package.

Islestarr claimed that both these works were original artistic works and its copyright had been infringed by Aldi, and the High Court agreed.

The court had first to decide whether copyright existed, did Islestarr own the copyright, and then whether it had been infringed.

Did copyright exist?

Aldi’s argument that copyright could not “subsist in the powder design as that is ephemeral in nature” was dismissed. The court determined that “the powders are a three-dimensional reproduction of the two-dimensional object, namely the drawing”, comparing the powders to sand art, or wedding cakes, where copyright clearly applies.

Aldi’s argument that the design was generically art deco was also considered and dismissed and the court found that copyright subsisted in both designs.

Did Islestarr own the copyright?

The designs were created by an agency, Made in Thought, and then assigned to Islestarr. Despite some discussion about whether the rights had been validly assigned from Made in Thought to Iselstarr, and whether the designers were employed by the agency or not, the judge concluded that they were employed and the rights had been assigned correctly, therefore Islestarr owned the title.

This part of the case shows the importance of establishing title, particularly with a collaborative design project and where multiple parties are involved and ensuring that agreements with designers and agencies include ownership of copyright and other IP rights.

Was copyright infringed?

This was an application for summary judgment so Islestarr had to show that there was no real prospect of Aldi successfully defending the claim. Aldi were aware of the Charlotte Tilbury palette at the time theirs was created and they did not have sufficient information to demonstrate that they had not copied the design.

Brand owners should note that IP enforcement is notoriously difficult in this area, and may need to consider a number of IP rights and decide which is the strongest in any particular claim. In this case, a copyright infringement claim was more successful than a passing-off or trademark infringement claim.