Girly tableware for blondes only
This tableware, consisting of plates, tea cups, sugar bowls, cookie bowls, etc, is decorated with colourful images of hearts, cupcakes, strawberries, sugar lumps, coffee beans, girl figures and handwritten texts. The typical style of the tableware is known throughout the Netherlands among young, mostly female, consumers.
Apparently, this popularity caused another company, Xenos, to introduce tableware which also depicts colourful hearts, cupcakes and happily chatting girls. Blond was not amused and started interim injunction proceedings, based on copyright infringement and slavish imitation. The first instance court rejected all Blond’s claims, stating that a certain sphere and style cannot be copyright-protected.
It also denied the slavish imitation claim based on the negative consequential affect of the Dutch Copyright Act, and the lack of exceptional circumstances. Blond appealed against this decision, persisting in its claims. On February 28, 2012 the Court of Appeal of Hertogenbosch handed down its decision.
The court first reviewed the copyright claims. Blond states that Xenos infringes the copyright on seven separate works: females drinking tea, the sugar lump, a coffee bean, a heart, a strawberry, a cupcake and a decorative band. For some of these images, the court decided that they are limited in creative scope and therefore not copyright-protected. For other images, the court decided that though the images are copyright-protected, Xenos’s images do not constitute copyright infringement.
What is left is the sugar lump. Xenos’s sugar lump constitutes a copyright infringement of Blond’s copyright-protected sugar lump. However, in view of the non-prominent and frequent reproduction of the sugar lump on the tableware, the court was of the opinion that an injunction would be too extreme. Therefore it did not grant an injunction based on copyright infringement.
“This decision is another good example of the possibilities that a claim based on slavish imitation can offer when claims based on intellectual property rights fail.”
Luckily, Blond also based its claims on slavish imitation, and this species of the act of tort was more successful. The doctrine provides that one is free to imitate, unless one needlessly causes confusion.
One causes such confusion when it was reasonably possible to prevent the risk of confusion without impairing the soundness and usability of the product. In this context Blond put forward the style elements and other characteristic elements of its tableware that are also present in Xenos’s tableware.
Unlike in the primary claim of copyright infringement, the separate elements are not compared, but rather the overall product lines, consisting of combinations of drawings, texts and colours. The court found that the overall impression of the Xenos’s tableware was similar to Blond’s, and Xenos’s did not demonstrate that it had done everything to prevent confusion. Xenos therefore acted illegitimately vis-a-vis Blond and must stop marketing the tableware.
This decision, although made in appeal interim injunction proceedings, is another good example of the possibilities that a claim based on slavish imitation can offer when claims based on intellectual property rights fail, or when there is no IP right on which a claim can be based. It is, however, surprising that Blond did not base a copyright claim on the overall composition of the tableware but did put forward the overall composition in the secondary claim of slavish imitation.
We are of the opinion that the composition as a whole can be regarded as copyright-protected and therefore might lead to copyright infringement after all. With regard to slavish imitation, we are surprised to see that the risk of confusion was not included in the assessment. We believe that if the lack of such a risk had been put forward by Xenos, a claim based on slavish imitation might have failed as well.
