[Guest post] Second time is a charm: Danish design company wins plant box war

On 22 April 2022, the Danish Eastern High Court handed down its decision in yet another dispute concerning applied art and the question of originality and infringement under copyright law. The dispute concerned a plant box created by the Danish design company ferm Living and sold in various colours.

Ferm Living is a Danish company designing and selling home furniture, accessories, lightning and other interiors, including the disputed Plant Box. Its products are sold in more than 60 countries.

Wolly & Co. is a Danish family-owned design and wholesale company, operating in home textiles, handicrafts, small furniture and clothing.

Wolly delivered the disputed plant boxes to Coop and Fakta. Coop is a cooperative operating several store chains, including Fakta, a subsidiary grocery store chain of Coop. Fakta operates around 350 stores in Denmark.

Ferm Living designed the disputed Plant Box in 2015. At that time only two other plant box design existed on the Danish market, both differing significantly from the Ferm Living plant box in their design. As shown by the photos below, the Plant Box in play is characterized by a rather lean and simple design.

In 2017-2018, Coop marketed the plant boxes produced by Wolly on its website, on several brochures of its operated store chains and through Coop’s Instagram profile. As shown below, Wolly’s plant boxes were quite similar, although with some differences like the design of the frame, as well as some minor differences with regard to the dimensions.

In October 2020 ferm Living lost the first round before the Danish Maritime and Commercial High Court: while the Plant Box was a copyright protected work, Wolly’s plant box had not infringed its copyright. The Maritime and Commercial High Court referred to the differences both with regard the design and the quality of the two products, respectively.

Ferm Living appealed. In its ruling, the Eastern High Court found that the design of the two plant boxes seemed identical at first glance and that the minor differences did not change the fact that the overall impression of the plant boxes was the same. Furthermore, the High Court stated that the significant similarities indicated that the Wolly’s plant box was based on the Plant Box as the direct source of design inspiration. The court concluded that Wolly’s products marketed and sold through Coop in the Fakta stores constituted an infringement of ferm Living’s copyright and design rights and also breached the general clause in the Danish Marketing Practices Act on ‘good marketing practice’.

It is often interesting when the High Court overturns a decision from the Maritime and Commercial High Court, it being a specialized court within the field of IP disputes. However, in this case both courts reached the same conclusion concerning the question of protection of the claimant’s product.

Whereas the threshold of originality has formerly been rather high in terms of implied art, industrial design, fashionwear and the like, the outcome of the case confirms that functional objects like the plant box can be considered “works of art” under to the Danish Copyright Act.

In a previous blogpost, concerning the Anne Black copyright battle, we saw that the High Court largely overruled the Maritime and Commercial Court and limited the copyright protection to only one out of three disputed products. All in all, case law, including the decision in the present case, seems to be aligned with both the EU copyright directives and the case law of the CJEU such as Painer, Infopaq and Cofemel. The Danish courts are definitely approaching EU convergence.

IPKat-approved plant box

On the question of infringement, the High Court overturned the decision of the Maritime and Commercial Court. The prevailing and explicitly stated opinion in case law has for decades been that applied art is only protected against identical or close-to-identical reproductions due to the lack of alternatives when designing such works. Although there are descent arguments supporting this position it has, on the basis of Painer, met heavy resistance from the legal academia (see the latest contribution from professor Morten Rosenmeier in NIR 1/2022, pp. 3ff., although with certain modifications compared to previous contributions). The Wolly plant box was definitely not identical with the ferm Living plant box, however the High Court decided in favour of ferm Living and probably in more compliance with EU case law as well.

Interesting as well is the decision on damages. As pointed out in the aforementioned Anne Black cases, Danish courts have previously been acting with significant modesty when awarding damages for IP infringements. This is not compliant with the Enforcement Directive (2004/48/EC): “[…] to act as a supplementary deterrent to future infringers” cf. recital 27 and ”[…] those measures, procedures and remedies shall also be effective, proportionate and dissuasive(…]”, cf. article 3).

This time, the Eastern High Court has been more generous – and EU compliant – and awarded an overall amount for reasonable remuneration, damages and non-financial damages of DKK 750.00 and DKK 250.000 from Coop and Wolly, respectively (the claims were DKK 1.5m and DKK 250.000., respectively). The court was unsure about the loss of profit due to the fact that numerous other plant boxes were entering the market in the said sales period and thus the causal connection was challenged.

Finally and important from both a theoretical and a practical angle is the decision on the legal costs. In general, the amount of costs is based primarily on the value of the dispute. Elements such as the complexity, extent and inclusion of experts in the case all influence the court’s decision with regard to costs. The losing party in a lawsuit is required only to reimburse the winner for costs “which have been necessary for the adequate conduct of the case” – and this assessment is left to the court’s discretion, based on guidelines and fee bands set out by the high courts. Costs awards are therefore generally granted for amounts that are not even close to the actual costs.

Lately and with explicit reference to the enforcement directive article 14 on ”reasonable and proportionate legal costs”, the decision from the CJEU C-57/15, United Video Properties, and not least with reference to the Danish Supreme Court decision of 16 March 2022 (UfR 2022.1951 H) changes have occurred and the level of costs awarded has definitely increased. Also in this regard Danish case law is getting more and more EU compliant.