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Jewellery copyright considered by the IPEC

Written by Ellis Sweetenham on 10 November 2015

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Helme and others v Maher and another [2015] EWHC 3151 (IPEC), [2015] All ER (D) 34 (Nov)

Facts:

The first claimant (H) and her daughter, the second claimant (L) were partners in a jewellery business.

The third claimant was the partnership itself as the company was a single legal entity.

 In 2008, H commissioned the creation of a logo with the words 'Hidden Gem Jewellery Company', which was used in advertising and promoting the claimants' business.

It was established that following an assignment from the logo's creator, the copyright in the logo was owned by H.

In 2008, H commissioned photographs of some of the jewellery, including of a double heart pendant.

Subsequently, H and the defendants entered into negotiations for a joint venture.

In preparation for the joint venture, the defendants incorporated a company called 'Hidden Gem Jewellery Company Ltd' and registered a domain name, which was used to set up a website.

The defendants advertised the claimants' jewellery to customers using the Hidden Gem' trade name and Logo. They advertised for sale the double heart pendant set which had featured in the photograph, and the photograph was used to promote those sales.

However, the negotiations for the joint venture subsequently fell apart.

The claimants brought a claim alleging passing off and/or infringement of copyright on the part of the defendants by, among other things, transferring of the hosting of the website and its development for direct online sales, distributing a flyer featuring the trade name and logo, advertisements in the national press or online.

Three of the advertisements had been before the letter before action on 9 April 2010 and four had been placed afterwards.

Issues:

The issue for consideration was whether the claimants had established their case for passing off and/or infringement of copyright.

The defendants contended that from later 2008, H had granted them a licence to use the 'Hidden Gem' trade name, the logo and the photograph, and that, at all times, the licence had covered all of the acts complained of.

The advertisements complained of, both before and after April 2010, had been placed by a company, Timscris, and thus fell within the licence.

Judgment:

In the present case, the acts complained of had been licensed.

H had given the defendants fairly free rein to make use of the 'Hidden Gem' name, the logo and the photograph. Therefore the use had not been unlawful.

The defendants had nothing directly to do with the placing of any of the advertisements, including those placed after 9 April 2010.

Sales of 'Hidden Gem' jewellery to Timscris before April 2010 had been licensed and, therefore, the subsequent advertising and sale of the jewellery by Timscris had to have been licensed.

All of the advertisements arranged by Timscris had been sub-licensed by the defendants, which had been within the scope of the broad licence granted by H to the defendants to use the 'Hidden Gem' trade name, the logo and the photograph

 The claim would be dismissed.

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