The parties

John Lewis needs little introduction to readers in the UK. To those outside the UK, it is a famous nationwide department store that also operates a highly regarded supermarket, Waitrose. Each year, it releases a Christmas advertisement that for many marks the beginning of the festive season. Since 2009, those ads have been created by leading Omnicom agency, adam&eve, part of the DDB network.

The case

John Lewis released its 2019 Christmas ad on 14 November 2019. Within hours Fay Evans, a self-published author, had claimed on social media that the ad and an associated book retelling the story (titled Excitable Edgar, “EE”) was strikingly similar to a book she had published about a dragon that sneezed fire two years earlier called “Fred the Fire-sneezing Dragon” (“FFD”). This marked the start of a combined legal and publicity campaign against John Lewis and adam&eve (the “defendants”).

Ms Evans sent a letter threatening legal proceedings against John Lewis just before Christmas 2020. John Lewis made clear that it and adam&eve had not copied her book, and provided documentary evidence that adam&eve had come up with the idea a year before she had published her book (the “2016 outline”). Nevertheless, Ms Evans commenced legal proceedings against John Lewis and adam&eve a year later, in 2021, again shortly before Christmas. She sought an injunction restraining the defendants from running the ad and publishing EE, damages and legal costs.

Ms Evans’ claim was that the defendants had seen her book, FFD, and copied it. She pointed to what she said were striking similarities, particularly in the appearance of the dragons and some of the allegedly similar scenes. She claimed that the overarching narrative of a dragon that failed to control its fiery emissions, drew opprobrium from those around him, and then gained acceptance by finding use for his fire could only have come from copying her book.

Not only did the defendants defend the claim, due to the publicity that Ms Evans had generated, they went a step further and brought their own counterclaim seeking a positive declaration that they had not infringed Ms Evans copyright and requiring her to publicise the judgment if the court found against her.

Today (Monday 3 April 2023), the court has handed down that judgment, finding that John Lewis and adam&eve did not copy FFD, and has ordered Ms Evans to publicise the judgment on her website and social media pages.

“the Claimant has carried on a media campaign publicising her allegations of copyright infringement for the last 3 years or so” HHJ Melissa Clarke

The claim

Ms Evans claimed that the text of FFD was an original literary work, containing original artistic works (the illustrations), and those works contained elements of the expression of the intellectual creation their respective authors, being Ms Evans and her illustrator. This is the well-established test developed by the EU courts and now part of UK law.

Copyright infringement can only occur if there is evidence of actual copying, so access to the work that has allegedly been infringed is an essential pre-requisite to a claim. Ms Evans relied on the sales she had made of FFD, which had taken place mainly via Amazon, her website and in person at author readings she carried out at schools, and claimed that the defendants had access to FFD. While she suggested that someone involved in the production of the ad (and creation of EE) must have seen FFD and incorporated elements of it, she said the presence of access and the similarities meant it was for the defendants to prove they did not copy it.

Some of those similarities were tenuous. She relied on her dragon, Fred, being child-sized, green, and having a ribbed front, triangular spikes and even two arms. She also relied on plot elements such as the dragons both melting snowmen (a side-by-side image of which was shown by Ms Evans in her media campaign), irritating the humans and eventually earning applause. She did not claim that the defendants had copied it all; just that they had copied elements of her intellectual creation.

The defence

The defence, at its simplest, was that the defendants had not seen FFD and did not copy it. The defendants relied first and foremost on the 2016 outline, which they said showed that the similarity was coincidental. They also relied on various third-party books with similar elements, including dragons that sneezed or otherwise caused havoc with their flames, as well as pointing out the other numerous differences. While the defendants disputed that the ad and EE were similar to FFD, they took on the challenge of proving independent creation.

The defendants referred to a 2004 case, IPC Media v Highbury-Leisure, where the judge had given the warning that, “In copyright cases, chipping away and ignoring all the bits which are undoubtedly not copied may result in the creation of an illusion of copying in what is left”. The idea being that if one focuses too much on the similarities, and ignores the overall context, two works can appear more similar that they really are.

The counterclaim

Ms Evans’s attempts to publicise her claim were substantial. She started with a post inviting the public to play ‘Spot the Difference'. She made repeated press releases, many of which coincided with the launch of John Lewis’s Christmas ads. The dispute was covered by several national publishers, including The Times, The Guardian, Mail Online and advertising industry press, becoming one of the most high profile intellectual property cases of the last few years, and arguably the most high profile advertising case in a generation.

In the face of such a campaign, John Lewis and adam&eve issued their own counterclaim seeking a declaration of non-infringement and an order that Ms Evans publicise the judgment in the event she was unsuccessful. Such counterclaims are rare, especially in copyright cases. In fact, we are not aware of any such counterclaims ever having been made, let alone being successful.

The defendants were, in effect, asking the court to correct some of the damage caused by Ms Evans’ media campaign.

“Evidence from the Defendants’ witnesses sets out how serious allegations of copyright infringement are to those working in the creative industries, and how they feel that their individual reputations, and those of the parties and other creatives involved, have been tarnished by the Claimant’s allegations. I understand their concerns.” HHJ Melissa Clarke

The judgment

The judge rejected Ms Evans’ claim and granted the counterclaim. The judge praised the individuals who gave evidence on behalf of John Lewis and adam&eve, who she found to be “honest and truthful”.

The judge went on to refer to Ms Evans’ “media campaign publicising her allegations” and agreed to make an order requiring Ms Evans to publicise the judgment. While the judge said she did not have any “material concerns” about most of Ms Evans’ evidence, she did find her evidence “very unconvincing” on the issue of her publicity. At the trial, the judge had probed Ms Evans on the timing of her press releases, finding that Ms Evans “was using JLP’s Christmas Adverts each year as a hook to gain more publicity to raise her profile as an author and drive book sales”.

Significance to the advertising industry

The case really was one about facts; did the defendants have access to and copy FFD? The judge found that they had not. However, some interesting wider legal points also arose:

• The availability for the protection of characters as literary copyright works is being increasingly recognised. It is now quite uncontroversial to claim that copyright subsists in a character. Bearing in mind that to infringe copyright one only needs to copy a ‘substantial part’, there may be an increasing risk of alluding to characters in advertising.

• IPC Media case remains good law despite the case pre-dating much of the EU and EU-derived case law that has happened since. This provides a useful counter argument to allegations that focus on similarity when there are clear and significant differences. This is something that had been doubted in light of the EU-derived ‘intellectual creation’ test, but those tests are reconciled in this judgment.

• In line with the recent Ed Sheeran case, the judge found that in order for a defendant to have copied, they must have had “access and not just the possibility of access”. This is an important development in UK copyright law in the age of the internet; the mere fact that something is available online does not mean that a defendant can be presumed to have seen it.

• Where claimants go too far with attempts to publicise their claim, defendants should consider the possibility of seeking a reverse declaration (i.e. a declaration of non-infringement) together with a publicity order. As far as we know, this is the first case of its type where a court has ordered an unsuccessful claimant in a copyright infringement case to publicise the judgment.

Advertisers and agencies will be pleased to see this claim rejected. Allegations that ads have copied various third party works are sadly common. In an era where everything is available online, and books, films and music can be self-published worldwide easily and at extremely low cost, advertisers are always at risk of receiving a complaint.

This judgment shows, however, that such claims can have significant challenges, especially when the advertiser and agency stand together, as was the case here. For us, though, the best takeaway is the praise shown by the judge:

I have been extremely impressed by the professionalism, thoroughness, care and creativity disclosed in the evidence of all those involved in the creation of the 2019 Advert and Excitable Edgar. They each appear to be at the very top of their game in their respective industries, and I consider they exit this litigation without the slightest hint or shadow of a stain on their creative integrity.

We could not put it better ourselves.

Lewis Silkin acted for John Lewis and adam&eve defending this claim.