The High Court has just handed down a judgment that John Lewis and adam&eveDDB (their creative team) did not infringe a children’s author’s copyright by releasing their 2019 advert and spin-off book featuring Excitable Edgar the dragon.
The claim
Fay Evans, author, claimed that John Lewis’ advert and subsequent book were strikingly similar to a book she had published about a sneezing dragon two years earlier called “Fred the Fire-sneezing Dragon”. She relied on the sales she made of her book to claim that John Lewis had access to it and had copied her original artistic work.
Ms Evans made these claims on social media which marked the start of a combined legal and publicity campaign against John Lewis and their creative team. She sought an injunction restraining the defendants from running the advert and publishing the Excitable Edgar book, damages and legal costs.
The defence
John Lewis defended the claim and explained to the court how they pitched ideas about a ‘lonely dragon’ the year before Ms Evans’ book was released. They said they did not know about Ms Evans’s book and did not copy it. They brought a counterclaim against her to seek a declaration that they had not infringed her copyright and requiring her to publicise the judgment if her claim was unsuccessful.
The judgment
Ms Evans failed to convince the court on the balance of probabilities (the evidential threshold in civil courts) that John Lewis and their creative team had copied her work and therefore infringed the copyright. The judge agreed to make an order requiring her to publicise the judgment online.
This may be the first time a court has ordered an unsuccessful claimant in a copyright infringement case to publicise the judgment.
How does UK copyright protect my literary characters?
Copyright cannot protect a character ‘idea’. Instead, it protects artistic expressions of an original idea in some recorded form and for intellectual property to exist there must be a fixed document somewhere of your character (including electronic documents). Protection arises automatically and it does not need to be registered.
Infringement
For your copyright to be infringed, you must show that the defendant has copied your work and the key test is whether a substantial part has been copied. The defendant must have had “access and not just the possibility of access” to the work – the mere fact that the character or book is available online does not mean that a defendant can be presumed to have seen this original work. If someone creates similar work by his or her independent efforts then this will not infringe your copyright.
Do I have to prove copying with other intellectual property rights?
Trade marks
Trade marks can be registered as words, images or a combination of both. You can register your character as a trade mark but you should be aware that there are limits to trade mark protection. In particular, the visual aspect of the character mark will be limited to the graphical reproduction of the mark that was filed in the trade mark application i.e. protection will be limited to the character in a certain position and in specific colours.
Enforcing a trade mark may be as straightforward as showing that the infringer has used it, without having to prove copying, and action can be taken before the infringer has even begun trading.
Registered designs
Registered designs help protect the appearance of a new product, including the physical shape, configuration and colour. It provides more options for protecting a character’s 3D shape or its use in multiple positions. You can sue for infringement even where a defendant does not copy the design.
Find out more
It is becoming increasingly popular to rely on copyright protection for literary characters. A combination of copyright, design and trade marks can provide the best solution. As with all enforcement and anti-counterfeiting strategies, preparation is key and Tozers can assist with thoughtful and proactive registration of intellectual property.
If you would like help or support with trade marks then visit our dedicated Intellectual Property pages or contact our expert team.
