John Lewis avoids coming under fire for use of dragon character in allegations of copyright infringement

The John Lewis Christmas advert usually garners widespread publicity for its festive content, but on this occasion the 2019 ‘Excitable Edgar’ advert has been subject of an almost equally well-publicised intellectual property dispute.

In the recent case of Evans v John Lewis plc and another [2023] EWHC 766 (IPEC), the Intellectual Property Enterprise Court considered similarities between a 2017 book written by Fay Evans and the 2019 advertisement by John Lewis and advertising agency, adam&eveDDB, in the context of alleged copyright infringement. 

The Dispute

The Court was asked to determine a claim issued in November 2021 by author, Fay Evans, for infringement of copyright in her self-published book Fred the Fire-Sneezing Dragon (FFD). 

The claimant pointed to similarities between both dragons as evidence of copyright infringement: it was argued that both dragons had fiery breaths they could not control which usually led to chaos, lived alone with humans and heated up food using their fire.

The defendants submitted that the idea for the advert was in fact conceived in 2016, and therefore prior to the publication of the book in question. An outline of the advertisement from 2016 was used as evidence by the defendant to show that breathing of fire, ensuing chaos and warming of food were part of original outline which was developed further and pitched to John Lewis in 2019. The defendants launched a children’s book based on the advert called ‘Excitable Edgar.’ Prior to the launch of the book, the defendants conducted a search for similar themed books and the claimant’s book was not identified in that search.

The defendant submitted a counterclaim seeking a declaration of non-infringement and a publicity order. They argued that the claimant publicised the case to coincide with the launch of the John Lewis’ Christmas adverts as a publicity stunt in respect of her own books.

The Copyright, Designs and Patents Act

Section 16(2) of the Copyright, Designs and Patents Act 1988 provides that the copyright of the owner is infringed if a person without the licence of the owner does or authorises someone else to do any of the acts restricted by the copyright. There was, unsurprisingly, no dispute as to whether the claimant owned copyright in her book.  

Although copyright is traditionally seen as protecting the specific text in literary works, we have recently seen a growing body of authorities considering the existence of copyright in the development of fictional characters and narratives in literary works (including the leading case of Shazam Productions Limited v Only Fools The Dining Experience Limited and others [2022] EHWC 1379 (IPEC), in which the Only Fools and Horses Character, “Del Boy”, was held to be a protected work!). The Court was therefore required to consider the extent to which the use of Excitable Edgar would constitute an infringement of copyright in the Claimant’s book.

The judge examined whether the copyright of the claimant had been infringed by assessing relevant factors, being the ‘degree of familiarity of the work of both parties, the character of the work, the objective similarity of the defendant’s work, the probability that such similarity could be a coincidence, the existence of other influences on the defendant and the quality of the defendant’s evident on the presence in his mind of the claimant’s work.’

The Decision

The Court held that the similarities between both dragons were not sufficiently similar to suggest that the 2017 book had been copied. Additionally, some of the similarities were already found in a 2016 outline of the John Lewis advert. It was also stated that the books were sold to a small number of people in a limited area which reduced the likelihood of the defendants being aware of it at the relevant time.

On the balance of probabilities, the judge was not convinced that John Lewis, the advertising agency or any of the creatives involved in the creation of the 2019 advert, and subsequent book, were aware of the claimant’s book until the allegations of copyright were made in 2019 on social media. The judge went on to state that there cannot be copyright infringement if the “work alleged to be copied has not been assessed by those said to have copied it.”

Perhaps more surprisingly, the judge went one step further, and used her discretion to make a publicity order against the Claimant, requiring the Claimant to publicise the result of the judgment on her website and social media accounts for a period of six months.

Comment

Although predominantly restating the law in copyright infringement matters, this case also served as a helpful reminder to potential litigants of the dangers of challenging works in circumstances in which planning could have taken place months, or even years, before the works come into the public sphere. On this occasion, the 2016 outline documents were key to the successful defence of a claim which, on the face of it, would have otherwise related to matters taking place long following publication of the Claimant’s book.

The case also served to highlight the potential dangers to the reputation of a claimant in matters of this nature. The publication of the defeat was considered to redress the balance following the ongoing commercial uncertainty for John Lewis, but has no doubt caused ongoing losses to the Claimant far beyond mere litigation costs

For further assistance with any IP related issues, please contact Laura Scott and Callum Powell.