A comparison photograph of one of the infringed products is shown above (the copy is the top image).

Simon and Katherine Lane are ACID members and trade under the name ClanArt. They design, manufacture and sell a range of fittings to compliment both traditional and contemporary Scottish and Irish dress. The distinctive feature of the products is the various decorations that are applied to them.  The decorations constitute original artistic works, being a combination of various features to produce a new design. Over the summer of 2006 ClanArt noticed a distinct change in the pattern of sales from their many customers. After 6 years of working in the market the sales patterns were very predictable and for some unknown reason sales began dropping and being erratic.

As the company had good working relationships with all their customers they decided to investigate what was causing the drop off in sales.  They believed that it was due to the influx of cheap imports from the Far East and Pakistan that was affecting their business; they decided to contact their main customers to find out what was happening.  They were told that sales were slow and the market was slowing down and that it would soon pick up and that this was due to low cost imports and also fewer visitors from the US. Accepting these comments, ClanArt continued as normal but to their surprise a few months later they started seeing copies of their products being advertised on several customers websites and eBay, these products had many similarities to ClanArt’s original designs.

ClanArt discovered two companies – their main competitor – Dalman & Narborough Limited and one of their main customers, Margaret Morrison Limited, were offering for sale identical products with decoration applied to them that reproduced the whole and/or a substantial part of ClanArt’s copyright works. After doing almost eight months of research ClanArt had eventually gathered enough evidence to decide to take the companies that were infringing their rights to court. A cease and desist letter was sent to the two companies, who denied infringement, on the basis that Mr and Mrs Lane’s works were not original, as they featured Celtic knot work that had allegedly been around for centuries. However they had failed to appreciate that a new combination of antecedent features can result in a new, original work.

Proceedings were issued and served upon the two companies, who then agreed to cease manufacture of the infringing items as well as paying ClanArt a 5 figure sum in damages and ClanArt’s legal costs.  As part of the settlement they also agreed to send all the masters, moulds and any remaining castings to ClanArt.

Simon commented that “It was a risky thing for us to do, but when two companies are taking away your business and livelihood, you have to fight or flight! After speaking with several solicitors and business friends, many of whom told us to avoid litigation at all costs, we decided that we wanted to show that we would not just roll over”, he continued “as we are members of ACID, an organisation fighting for protection of creative rights with access to specialist IP lawyers and barristers, we decided that we would protect our rights. As a designer, when you see someone copying your designs you get a sick feeling in your stomach, which rapidly turns to anger that someone has violated your work. Your instinct says that you will go after them whatever it takes, but my feeling is that you then have to step back and look at the situation logically and clearly, before thinking what action to take – then research, prepare, plan and fight – or forget it and get on with your life!”

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