Charlotte Tilbury – highlighting the pow(d)er of using copyright against copycats

Islestarr Holdings Ltd, better known as luxury make up brand Charlotte Tilbury, secured summary judgment in a copyright infringement case against Aldi. The case highlights some interesting reminders around subsistence and infringement of artistic copyright works but also demonstrates a useful set of tactics for tackling a problem which has all too often vexed luxury brands – the copycat product.

The facts were straight forward and somewhat familiar. Charlotte Tilbury (with Made Thought) designed its successful ‘Filmstar Bronze and Glow’ contour palette which retailed at around £49. Aldi, whose own slogan is “like brands, only cheaper”, produced a similar palette which cost a mere £6.99.

Islestarr claimed that the lid decoration of the Filmstar palette and the decoration in the make-up powder itself were artistic works that had been copied and infringed by Aldi. Aldi couldn’t deny it had seen the Filmstar palette but it did test every aspect of Islestarr’s case when defending a summary judgment application.  Aldi contended, amongst other things, that:

  1. The designs were not properly assigned from Made Thought to Isletarr;
  2. Copyright could not subsist in the powder design given it’s ephemeral nature; and
  3. The designs were not sufficiently original to benefit from copyright protection.

Deputy Master Linwood found in Islestarr’s favour on all of these points and gave summary judgment, holding that Aldi had no real prospect of successfully defending the claim at trial. 

The fact the powder could be rubbed away did not remove copyright protection and the powder design was essentially a three dimensional reproduction of the two dimensional design drawings.  As for originality, Deputy Master Linwood held that even works consisting of a combination of simple elements will be sufficiently original provided that when the design is viewed as a whole, there is no element of “slavish copying“.  This is not new law but it is a useful summary none the less.

Summary judgment is an often forgotten tool but it is a possibility in simple copyright cases. Islestarr’s particulars of claim identified the potential issues in dispute, setting the stage for the summary judgment application and the case was decided without the need for a full trial. This is an attractive proposition to brand owners who want to take decisive and swift action against copycats. That said, Aldi’s barrage of attacks on every element of Islestarr’s case should remind brand owners that they must have all their evidential ducks in a row before making such an application and the better practice is to procure assignments at the time of creation rather than at the time of issuing proceedings.

Luxury brands have often failed when pursuing copycat products on the basis of trade mark rights or passing off. Indeed, for the purposes of summary judgment, Islestarr’s passing off claim was dropped. In practice it is often difficult to show that customers will be deceived or confused as between the original product and the copycat. But copyright, and though not argued here, design infringement, have different tests for infringement that are potentially less tricky to prove when key artistic or design elements have been copied. Brand owners should consider what designs can be incorporated into their products and packaging to help protect against potential copies.  

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