Can You Copyright a Powder? Charlotte Tilbury Wins Over look-a-like Contender from Aldi
A recent UK decision illustrates the difficulties in proving what artistic copyright can extend to, and how it is affected by the concept of ‘fixation’ or permanency.

Tilbury Aldi Palette

                              Charlotte Tilbury ‘Film Star Bronze and Glow’ Palette                           Aldi Lacura Palette

 

Discount retailer ‘look-a-like’ products are posing increasing problems for better-known brands and are commonly the subject of large-scale trade mark, passing off, and copyright litigation. However, can you copyright something as ephemeral as a powder? 

In a recent decision of the High Court of England and Wales in Islestarr Holdings Ltd v Aldi Stores Ltd, Charlotte Tilbury has concluded that you can.  

"Filmstar Bronze and Glow" palette

Islestarr Holdings Ltd launched the ‘Charlotte Tilbury’ makeup brand in 2013 with the release of the ‘Filmstar Bronze and Glow’ palette. Celebrity make-up artist, Charlotte Tilbury, developed the design for the palette with Made Thought Limited, who later assigned the IP rights in the palette to Islestarr.

In July 2018, Aldi Stores Ltd launched a strikingly similar palette under their own ‘Lacura’ cosmetics range at a US trade show. The palette bore similarities to the Charlotte Tilbury palette in both its outward appearance and the embossed design on the powder inside. The Aldi palette retailed at €7.00 per unit compared to €65.00 per unit for the Charlotte Tilbury palette.

Did the Charlotte Tilbury palette attract copyright?

In deciding whether there was copyright infringement by Aldi, the Court had to determine:

  • was the Aldi design, directly or indirectly, derived from an original copyright work (i.e. did the Charlotte Tilbury palette attract copyright); and, if so
  • did the Aldi design reproduce a substantial part of the copyright work?

Powder Design 


 

 


 

‘Filmstar Bronze and Glow’ Powder Design

Before dealing with the substantive questions of copyright infringement the Court first had to consider whether a powder, being so transient in nature, could even attract copyright protection. The Court held that despite that the powder, once applied, would disappear; it was still “a three-dimensional reproduction of the two-dimensional object, namely the drawing”.

In applying the European Court of Justice decision in Infopaq the Court held that the Charlotte Tilbury palette was sufficiently original as to attract copyright protection because it was uniquely art deco in style and therefore required intellectual creation or independent skill and effort. It was not the product of “slavishly copying from the work produced by the efforts of another person”.

Did Aldi infringe this copyright?

In deciding whether Aldi had infringed this copyright, the Court then applied the Designers Guild test of whether the visual comparison of the similarities and the differences are such that they appear to be “the result of copying rather than of coincidence”. By applying this test, and in the knowledge that Aldi had admitted to its familiarity with the Charlotte Tilbury palette at its own design stages, the Court found that the similarities of both palettes were indeed substantial and copyright infringement was established. 

Key Takeaways

This decision is of interest in assessing what artistic copyright can extend to, and how the existence of such copyright is affected by the concept of ‘fixation’ or permanency.  The Court emphasised that an artistic work, unlike copyright in literature or musical works, is not explicitly required to be permanent. This position was reinforced by the fact that the embossed design in the powder originated from physical drawings. Incorporating unique style elements into products can give protection against look-a-like contenders nevertheless it could be argued that the level of intellectual creation or skill displayed in the Charlotte Tilbury palette was ‘de minimis’. In other jurisdictions, this design may have fallen down on originality. 

Key Cases

  • Islestarr Holdings Ltd v Aldi Stores Ltd [2019] EWHC 1473 (Ch)
  • Infopaq International A/S v Danske Dagblades Forening [2010] FSR 20; [2009] All ER (D) 212
  • Designers Guild Ltd v Russell Williams (Textiles Limited) [2001] FSR 11

 

Contributed by: Florence Meagher


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