Appeal dismissed in YNNY v KMS case on passing off and copyright infringement

Citation: [2023] EWCA Civ 1493
Judgment on

Introduction

The case Yours Naturally Naturally Yours Limited v Kate McIver Skin Limited & Anor [2023] EWCA Civ 1493 concerns an appeal from the Intellectual Property Enterprise Court wherein two primary legal issues were contested: passing off and copyright infringement. The Court of Appeal, under the guidance of Lord Justice Arnold, considered the principles established in precedent cases to affirm key aspects of the lower court’s judgment and dismissed the appeal.

Key Facts

Yours Naturally Naturally Yours Limited (YNNY) accused Kate McIver Skin Limited (KMS) and Christopher McIver, late Kate McIver’s widower, of misrepresenting their skin care products as being associated with YNNY’s product, and thereby damaging YNNY’s goodwill. YNNY also claimed copyright infringement by KMS based on the continued use of marketing materials post-termination of an implied license initially granted for their use.

The analysis of this case involved revisiting various legal principles related to passing off and copyright infringement:

Passing off

The court reiterated the classic trinity test for passing off established in Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491: (i) goodwill attached to the goods or services, (ii) misrepresentation by the defendant, and (iii) damage to the claimant’s goodwill.

The Court of Appeal also drew upon precedents dealing with “reverse passing off,” notably Plomien Fuel Economiser Co Ltd v National School of Salesmanship Ltd (1943) 60 RPC 209, and Bristol Conservatories Ltd v Conservatories Custom Built Ltd [1989] RPC 455, where it was recognized that misrepresentations about a product’s origin can harm the actual creator’s goodwill. The case Samuelson v Producers Distributing Co Ltd (1931) 48 RPC 580 was also discussed, highlighting the harm to claimants’ businesses caused by deceptive misrepresentations.

The Court found that YNNY successfully established goodwill, and KMS made false representations that their product was same as YNNY’s product, leading to consumer deception.

Copyright infringement was addressed under the Copyright, Designs and Patents Act 1988. YNNY’s success hinged on the Defendants’ admission that the copyrighted marketing materials were used without a proper license post-termination of an implied license to use such materials. Despite deficiencies in YNNY’s pleadings, the continuing online availability of the marketing materials was deemed a continuing infringement.

Outcomes

The Court of Appeal supported the following outcomes:

  1. The appeal regarding misrepresentation through passing off was dismissed, affirming the lower court’s finding that KMS’s actions damaged YNNY’s goodwill.
  2. On copyright infringement, it was determined that KMS continued to infringe YNNY’s copyright after 30 November 2018 due to the availability of the materials online. The case was flawed in pleadings, but YNNY’s position was bolstered by admissions and lack of defense from the Defendants.

Conclusion

The appeal judgment in Yours Naturally Naturally Yours Limited v Kate McIver Skin Limited & Anor reinforces the classic legal principles related to passing off and the contemporary understanding of intellectual property rights regarding copyright. The Court of Appeal judiciously applied these principles and precedent cases to uphold the lower court’s ruling on both passing off and copyright infringement, demonstrating the strength and continued relevance of established legal doctrines in protecting the rights of intellectual property owners. The outcomes emphasize the importance of accurate representation and licensing agreements in the commercial utilization of creative works.