The Eastern High Court: Replicas of ferm Living’s Plant Box violated copyright, marketing law and design rights

On the 22nd of April the Eastern High Court has delivered a judgment in a principal case on copyright, marketing practices, and design right infringements committed by Coop, Fakta and Wolly. The court ordered all three companies to pay damages and costs for selling and marketing products, which violated ferm Living’s rights to its popular Plant Box, an elevated box for plants in metal.

With that, the Court reversed a previous judgement by the Maritime- and Commercial High Court, who found no infringement by Coop, Fakta and Wolly – despite having concluded that ferm Living’s Plant Box was protected by copyright, marketing law, and design rights.

The Plant Box v. Wolly’s plant box

Ferm Living’s Plant Box was launched in 2015. The Plant Box has been featured in a number of Danish and international home- and lifestyle magazines, and the design was nominated in several categories at the 2016 Design Awards.

Subsequently, Wolly launched a plant box with a similar design, which was sold to Coop and Fakta, who marketed and resold the plant box in their stores.

It was revealed during the proceedings that a Wolly employee, during the development of their plant boxes, sent pictures of ferm Livings Plant Box to an employee in Wolly’s Chinese division with the intention of developing a similar product.

At the end of 2018 ferm Living filed suit against Coop, Fakta, and Wolly at the Maritime- and Commercial High Court.

Broadly protected

A key question in both instances was, whether ferm Living’s Plant Box met the requirements for being protected by copyright, marketing law and design rights.

Copyright protection requires that the work is an expression of the authors own intellectual creation. Both instances found, based on expert opinions, that this requirement was fulfilled in the present case. 

Furthermore, both instances found that the Plant Box was protected by the marketing practices act, since it had both the necessary distinctiveness and had been successfully marketed for several years.

Finally, both instances found that the product was also protected by design rights based on a 2015 design registration.

The overall impression

Even though the two instances predominantly agreed on the protection afforded to the Plant Box, the infringement assessment was fundamentally different, which required the Eastern High Court to change the Maritime- and Commercial High Court’s decision regarding all three types of protection.

The Eastern High Court concluded that even if small differences existed between ferm Living’s Plant Box and Wolly’s plant boxes, the overall impression was the same. It was also a key factor that the expert opinion underlined that the designer had a wide range of options and freedom of choice when designing a product such as the plant box.

On this basis, the Eastern High Court found that Wolly’s plant box should be regarded as being created with the Plant Box as a direct template, which was also supported by Wolly’s internal correspondence related to the development of their plant box.

In view of this, the Eastern High Court concluded that ferm Living’s copyright and rights under the marketing practices act had been infringed by Wolly’s plant box.

The same conclusion was reached by the Court with regards to the design rights, where it was found that the informed user would get the same overall impression of the Plant Box registered design and of Wolly’s plant box.

Historically high damages awarded

In the assessment of damages, the Eastern High Court took into account the profit obtained by the infringing parties, market disruption, and the loss of profit which ferm Living had suffered as a consequence of the imitation.

There are, however, significant unknowns and uncertainties, especially in the assessment of loss related to disruption of the market, and therefore damages were set discretionarily as 750,000 DKK with interest for Coop and Fakta and 250,000 DKK with interest for Wolly.

This is a historically large amount awarded in damages, especially in Danish case law related to infringement of design rights, where the courts have traditionally been reluctant to grant substantial damages.

Furthermore, Wolly was prohibited from producing, selling, or marketing their plant boxes in Denmark, and they were ordered to destroy their current stock of plant boxes. 

Both Coop, Fakta, and Wolly were ordered to publish the Eastern High Court’s decision on the front page of their websites for a minimum period of 14 days.

Lastly, the important question regarding costs was assessed. Article 14 of the Enforcement Directive and the case law of the European Court of Justice means that the losing party in IP cases should bear the reasonable and proportionate costs paid by the winning party in relation to the case.  

The Eastern High Court set these costs as 1,053,745.60 DKK for proceedings in both instances to be paid in solidum by Coop, Fakta, and Wolly.

Our Comments

The case is evidently an expression of a tendency in Danish case law, where rightsholders and designers are protected to a greater extent against imitations of popular products by corporations and retail chains.

Regarding the infringement assessment it is of particular importance that the Eastern High Court acknowledged that the copyright related to the Plant Box as applied art was infringed. Danish law has generally been reluctant in recognizing copyright protection and subsequent infringement of applied art, even as the Court of Justice have established that all types of works should be treated equally.

The sanctioning in this case can be of fundamental importance for Danish law as well, since the damages granted are much higher than, what the courts have granted in previous cases. Hopefully, this means that the intentional imitation of popular designs and products by some companies can be avoided in the future, since the previous level of damages granted has not had a sufficiently deterrent effect.

Ferm Living was represented by Bugge Valentin in both instances.

The Eastern High Court’s judgment can be read in Danish here.