UK Update: Copyright claim under fire: John Lewis dragon is here to stay

It is perhaps inevitable that, whenever a new advert, story or character is created, it will bear some similarities to something which has come before.

If these similarities are overwhelming, however, and the creator of the original work feels that they have been copied, the creator can take legal action to enforce their rights as copyright owners.

However, legal action will not always be successful – it must be shown, on the balance of probabilities, that the creator of the later work had access to the earlier work and copied substantial elements of it.

Earlier this month, a High Court judge handed down her judgment in Fay Evans v John Lewis PLC & Another, 2023 EWHC 766 (IPEC) (see link). John Lewis, the well-known department store, released a Christmas advert in 2019 featuring a dragon who cannot control his fiery emissions – with predictably entertaining results – but ultimately wins hearts by using his talents to light a Christmas pudding.

Fay Evans, a children’s author, raised an action against John Lewis and adam&eveDBB, an advertising agency, claiming the defendants had infringed the copyright in her book Fred the Fire-sneezing Dragon.

In the defendants’ favour was the claim that the original idea of a dragon-based Christmas advert was first considered in 2016, the year before Evans self-published her book. The ideas present in the 2016 outline could not, therefore, have been copied from the book. Consequently, the judgment focused on how the advert’s concept developed from the original outline into the final product and the likelihood that the defendants had access to the claimant’s book in order to copy from it.

The judge found that various elements of the claimant’s book were protected by copyright. These elements included the choice of Fred the dragon’s size, his ribbed front, triangular spikes, two arms and some of his facial features.

This was, however, where the claimant’s success ran out. The judge found that, in the case of some similarities between the John Lewis dragon narrative and those in Evans’s book, these elements arose before the latter’s publication, so were not the result of copying.

In the case of other similarities – namely to the character and appearance of Evans’s dragon, which were not found in the 2016 outline – the judge found that these were not sufficient to raise a presumption of copying rather than coincidence.

In her reasoning, the judge explains there was no direct evidence that anyone involved in the John Lewis advert or its book spin-off had access to the claimant’s book before the advert launched. The reasons given for this include the low number of similarities between the claimant’s book and the defendants’ final advert, and the very low number of copies sold of the claimant’s book.

A further interesting point in the case was that the defendants sought a publicity order, requiring the claimant to publicise the judgment made against her. This was sought on the grounds that the claimant had both publicised the case and allegedly timed such publicity to coincide with more recent John Lewis Christmas adverts, for maximum impact.

The judge referred to the test given in Samsung v Apple [2012] EWCA Civ 1339 for the granting of such an order – the need to dispel commercial uncertainty. The defendants’ submission, that such uncertainty had been magnified by the publicity campaign carried out by the claimant over the previous three and a half years, was accepted, and a publicity order granted. The claimant was required to publish a notice on her website and social media pages, with a link to the judgment, for at least six months.

Although the publicity order was unusual coming from the English High Court, these are a lot more common north of the border. Regulation 5 of the Intellectual Property (Enforcement, etc.) Regulations 2006, which applies only in Scotland, expressly provides for the court to order appropriate measures for the dissemination and publication of the judgment. Often our rights holder clients consider it important to communicate that they are prepared to enforce their IP when it has been flagrantly infringed. We include a request for such an order in many intellectual property actions we raise, and it is often granted.

By Burness Paull LLP, Scotland, a Transatlantic Law International Affiliated Firm.  

For further information or for any assistance please contact ukscotland@transatlanticlaw.com

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