SUPREME COURT CONFIRMS COPYRIGHT PROTECTION AND RAISES DAMAGES IN LANDMARK PRODUCT IMITATION CASE

The Danish Supreme Court has now finally concluded the lengthy and highly publicised product imitation case between design company Anne Black ApS and Denmark’s biggest retail conglomerate Salling Group along with its retail product manufacturer Ronald A/S.

The judgement, which was published on 22 March 2023, concluded that Salling Group and Ronald had infringed Anne Black’s copyright and rights in accordance with the Danish Marketing Practices Act. The infringers were ordered to pay DKK 1 million in damages and DKK 600.000 in costs.

The case included several issues of general importance for the IP sector in Denmark, and it will likely serve as an important precedent for the protection of designers and rightsholders.

Case Summary

The case at hand started in 2016, where Salling Group began selling a hanging pot, a vase, and a pot in their main retail store Netto. The products, which bear a very close resemblance to Anne Black’s products, were produced by the manufacturing company Ronald.

Despite Anne Black being a small ceramics design company with only a few employees they decided to initiate proceedings against Salling Group and Ronald.

In June 2019 The Maritime and Commercial High Court rendered a favourable judgement for Anne Black, where the defendants were ordered to pay DKK 1,5 million in damages for the infringements.

However, on appeal before The Court of Appeal of Eastern Denmark the damages were lowered to DKK 300.000 and costs were not awarded to either party.

Anne Black therefore requested that the case be tried before The Supreme Court, which was allowed, as it was deemed that it included issues of general importance. 

Copyright and product protection

One of the main questions in the case was whether the ceramic products were protected by copyright in accordance with the Danish Copyright Act and against product imitation by the Danish Marketing Practices Act.

The designs at hand are characterised by their minimalistic appearance. It was therefore argued by the alleged infringers that such designs did not qualify for any, or at least only very narrow, protection from imitations.

On the other hand, it was argued that minimalistic designs do enjoy protection, as they can likewise fulfil the criterion of originality, if they express the creator’s own intellectual creation. It was argued that in minimalistic design the intellectual creation also includes the designer’s choices to refrain from overcomplicating the creation and instead going for a clean and simple look.

The case must also be seen in light of previous case law in Denmark, where the courts have normally been very reluctant to grant protection to applied art. This is especially the case with regard to copyright protection.   

This issue is further complicated by the impact of the CJEU’s Cofemel judgement, which most likely will have (and to some extent has already had) positive impact for rightsholders in Denmark in regard to both the protection and infringement assessment.

The Supreme Court ruled that one of Anne Black’s three products was protected by copyright, while all three of the products were protected from product imitation in accordance with the Danish Marketing Practices Act.

The importance of this ruling cannot be understated, as it cements that applied art, in this case ceramics, can be copyright protected. The judgement will also serve as an example of the protection of minimalistic design.

Unsurprisingly, as the products manufactured by Ronald and sold by Salling Group were very similar to the protected products, The Supreme Court concluded that all three products were infringed.

Assessment of damages

A key part of the case also revolved around the question of assessment of damages and the requirements for proof of the loss suffered. The judgement of The Court of Appeal of Eastern Denmark to lower the amount of awarded damages highlighted that sufficient proof of losses had not been made.

The Court of Appeal of Eastern Denmark therefore based the assessment of damages on the infringer’s profit, which were much lower than the losses claimed by Anne Black.

It is notoriously difficult to prove such losses in IP-cases, especially losses due to lost sales, brand damage, and market disruption from the infringement. This issue has both been flagged several times by the IP sector (especially in regard to SMEs), and The European Commission has acknowledged the issue in both their guidelines to, and review of, the Enforcement Directive.

Before The Supreme Court it was argued that the nature and the severity of the infringement should result in a more lenient burden of proof f0r the losses suffered. This principle has so far only been used in Danish case law regarding corporate law but The Supreme Court acknowledged the argument.

Therefore, it now seems that The Supreme Court has adopted this principle into an IP context, whereafter the nature and the severity of the infringer’s act can lessen the rightsholder’s burden of proof for losses.

This judgement will most likely have a very large impact on future IP infringement cases in Denmark, as rightsholders now have a better opportunity to meet the threshold of sufficient proof for suffered losses.

Consequently, The Supreme Court raised the damages to DKK 1 million. Anne Black was also, in contrast to the judgement of The Court of Appeal of Eastern Denmark, awarded DKK 600.000 in costs.

BUGGE VALENTIN represented Anne Black before The Supreme Court.

The decision can be read in Danish here.