Summary judgment application rejected in unregistered design infringement claim

United Kingdom

In Dahlia Fashion Co Ltd v Broadcast Session Ltd ([2012] EWPCC Civ 23, May 16 2012), an application for summary judgment in a dispute over unregistered design rights has failed, as although the defence advanced by the defendants concerning the subsistence and ownership of the rights was unlikely to succeed, the test to be applied was not one of probability, but an absence of reality.  

This decision concerned an application for summary judgment in a claim based on UK unregistered design rights and Community unregistered design rights. The claimant, Dahlia Fashion Co Ltd, claimed title to the designs of two articles of clothing, referred to in the judgment as the 'Betty Dress' and the 'Dahlia Skort Playsuit' (a 'skort' being a pair of shorts that resemble a skirt). 

The claimant alleged that the rights in these designs were infringed by the first defendant, Broadcast Session Ltd, through the sale of more or less identical copies of the items of clothing. The second defendant, Mr Joshi, was said to be personally liable for the acts of his company, the first defendant. 

His Honour Judge Birss QC noted that Part 24 of the Civil Procedure Rules, which governs applications for summary judgment, would allow the court to give summary judgment if the defendants had no real prospect of successfully defending the claim and there is no other compelling reason why the case or issue should be disposed of at a trial. It is the claimant's burden to prove that a claim is suitable for summary judgment, but this should not turn the application for summary judgment into a "mini-trial" of the issues. 

In respect of the Dahlia Skort Playsuit, the defendants raised various arguments in their defence challenging the scope and subsistence of the claimant's rights. In particular, the defendants cited a similar garment produced by the same freelance designer engaged by the claimant to produce the Dahlia Skort Playsuit. It was therefore accepted that the determination of this issue was inappropriate for summary judgment. 

The only defence to the infringement in respect of the Betty Dress raised by the defendants was a non-admission of the claimant's title and subsistence of the rights. The defendants challenged whether it was appropriate to consider these alleged infringements on a summary basis, as the Betty Dress was designed by the same individual as the Dahlia Skort Playsuit. Unlike with the Dahlia Skort Playsuit, the defendants were unable to produce an earlier garment. The defendants however reasoned that, if their arguments in relation to the Dahlia Skort Playsuit were successful, this would have a knock-on effect on the arguments put forward in relation to the Betty Dress. 

The judge sympathised with the claimant's position. He considered that the defendants' case in respect of the Dahlia Skort Playsuit was properly arguable but not strong, and that their case in respect of the Betty Dress was weak. He felt that the claimant was much more likely to succeed than the defendants but, nevertheless, it would be wrong to give summary judgment in respect of the Betty Dress infringements. As the same freelance designer had created both garments, if the arguments concerning the Dahlia Skort Playsuit were successful, a scenario described by the judge as "possible but unlikely", it was “conceivable but unlikely" that this would impact on the Betty Dress infringement claim.

Accordingly, the judge refused summary judgment in respect of the Betty Dress. Instead, he exercised his discretion under Paragraph 4 of the Practice Direction to Part 24 to make a conditional order requiring the defendants to pay £10,000 into court within 14 days of the judgment or have their defence in relation to the Betty Dress struck out. The purpose of the sum was to act as security for costs and potential damages.

This decision is an example of the difficulties that arise in summary judgment applications in IP matters, and in particular those concerning unregistered rights. These difficulties flow from the nature of the way such claims are necessarily defended, more often than not by challenging the subsistence of the rights relied upon. The judge was sympathetic to the claimant's case and plainly unconvinced by that of the defendants. Nevertheless, summary judgment applications are not mini-trials, and the test for the judge to apply is not one of probability, but an absence of reality. Although improbable, the defendants' arguments in relation to the subsistence of unregistered rights and whether the claimant had title to such rights would have to be heard.

Unable to give summary judgment, the judge granted a conditional order against the defendants in relation to the Betty Dress. Although not the outcome sought by the claimant in the present case, such an order is likely to force a defendant to consider whether an improbable defence should be maintained through to trial. Especially in relatively low value claims, such as the present claim where the defendants had sold only £477 worth of the copy of the Betty Dress, conditional orders can be an effective method of narrowing the issues between the parties.

Leigh Smith, McDermott Will & Emery UK LLP, London

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