The case of Martin & Ors v Bodegas San Huberto SA & Ors [2025] EWHC 1827

In these proceedings, David Stone, sitting as a Deputy High Court Judge in the Intellectual Property Enterprise Court, found that the copyright in an artistic work created by the First Claimant had been infringed and that her business had also been passed off.

The decision addresses several issues, namely primary and secondary copyright infringement, moral rights, passing off and joint tortfeasorship.

It serves as a caution to UK importers, who may assume that IP clearance is the responsibility of their foreign suppliers, potentially exposing themselves to liability under UK law for importing and selling infringing products.

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Background

The First Claimant, Shantell Martin MBE (“Ms Martin”) is a visual artist, who has a significant online presence and is known for her distinctive style, which has been used in collaborations with Puma, The North Face or Tiffany & Co.

In 2017 she created a wall drawing for a solo exhibition at the SKG Museum in Buffalo, New York, which is shown below (the “Work”):

Copyright in the Work was assigned to the Second Claimant, Found the Found LLC (“Found”), on 2 June 2021.

The First Defendant, Bodegas San Huberto (“BSH”), is an Argentinian winery, which produces wine for sale in the UK. In early 2018 it sold wine under three different labels, designed by a third party and shown below (together, the “Products”):

First Label    Second Label       Third Label

The Second Defendant, GM Drinks Limited (“GM Drinks”), is a UK wine importer and distributor which imported and offered the Products for sale in the UK.  The Third Defendant, Mr Patch, is a director of GM Drinks.

Mr Patch ordered the Products from BSH, without knowing or even suspecting that they would infringe third-party rights. He carried out no IP clearance searches, assuming this was the supplier’s responsibility. He had never heard of Ms Martin or the Work, before she contacted him.

GM Drinks sold over 18,000 bottles bearing the First Label before Ms Martin became aware of them and on 12 April 2020 requested that the label no longer be used, as she considered it infringed various IP rights.

GM Drinks then adopted the Second Label, followed later by the Third Label. Ms Martin also objected to those labels and legal proceedings were issued.

Allegations

Found alleged copyright infringement, pursuant to sections 18, 22, 23(a) and 23(b) of the Copyright, Designs and Patents Act 1986 (the “CDPA”).

Pursuant to section 77 CDPA, Ms Martin alleged infringement of her moral right to be identified as the author of the Work as shown on the labels. She also claimed passing off.

Decision

Copyright infringement

First Label

Having considered the relevant case law, including the Infopaq decision and the Designers Guild Limited v Russell Williams Textiles Limited decision, the judge held that copyright subsisted in the Work and was owned by Found. He accepted that the similarities between the First Label and the Work were “more than sufficient” to engage the presumption that the Work has been copied. He held that the First Label was a copy of the Work which, although modified in some respects, also contained certain features that were identical and arranged in the same way in space, as shown below:

First Label (The Case)                     Relevant Segment of the Work

It was irrelevant that the First Label was designed by an independent third party, who carried out the copying, as the alleged acts of infringement related to issuing copies to the public in the UK, and importing and selling the Products in the UK.

Second Label

The Second Label was accepted as a redesign of the First Label. The issue was whether it diverged sufficiently from the Work to avoid infringement. The Claimants argued that eight features expressing Ms Martin’s creative choices were included in the design of the label, meaning it reproduced a substantial part of the Work.

The judge disagreed. He noted that the Second Label diverged sufficiently from the Work, omitting two of its most distinctive features: humanoid faces and the absence of perspective. Any similarities (lines, loops, dots, birds and suns) were generic drawing elements, not reproductions of Ms Martin’s intellectual creation. The Second Label simply consisted of “black and white line drawings of different objects”, not inexact imitations of the Work. The copyright infringement allegations were rejected.

Third Label

The Third Label was a further redesign. The Claimants relied on the same three bases of infringement as for the Second Label, including the eight feature analysis and the alleged reproduction of Ms Martin’s loops, lines and dot-work. The judge found that the Third Label moved even further from the Work than the Second Label and did not reproduce Ms Martin’s intellectual creation. It was therefore not a substantial reproduction and did not infringe.

As such, GM Drinks was liable under section 18 CDPA for issuing copies of the Work to the public via the First Label Products, and under sections 22, 23(a) and 23(b) CDPA for importing, possessing in the course of business, selling and offering for sale First Label Products after 12 April 2020, when they first knew or had reason to believe the label infringed the Work.

Moral rights infringement

Although moral rights were not a listed issue at trial, the judge indicated that Ms Martin would have succeeded under section 77 CDPA in respect of First Label Products circulated in the UK after 12 April 2020, as they did not acknowledge her authorship and she had asserted her moral rights under section 78 CPDA.

Flagrancy issue

Again, although not a listed issue at trial, the judge held that the infringement was not flagrant. GM Drinks was unaware of Ms Martin or the Work until 12 April 2020, and its sale of around 5,880 bottles thereafter did not warrant any moral opprobrium. The judge found that damages should be compensatory only.

Passing off

1. Goodwill

Ms Martin alleged she owned goodwill generated in connection with her work.

The judge found that she had the requisite goodwill, citing her collaborations with major brands, her exhibition at Tate Modern and the use of her work in UK schools.

The issue was in which elements of her work Ms Martin’s goodwill subsisted. She argued that her entire artistic style attracted goodwill, listing seven features. The judge disagreed, finding that the list appeared tailored to match the features of the First, Second and Third Labels. Instead, he held that her goodwill subsisted in her work, particularly characterised by:

1. Black line drawings on a white background;
2. Two-dimensional imagery, with no perspective; and
3. A “map-like” or patchwork appearance combining humanoid faces with geographical features such as mountains.

2. Misrepresentation

Ms Martin relied on two instances of consumers being misled by the First Label. The judge found these consistent with his own view that the First Label was sufficiently close to her work to amount to a misrepresentation that she had endorsed, or was otherwise associated with, the Products. Therefore, GM Drinks, as the importer of the Products into the UK, was liable. However, BSH, who undertook no acts in the UK, was not.

The Second and Third Labels were not sufficiently similar to the Work to amount to misrepresentations, lacking its key characteristics and instead incorporating clear references to wine-making, such as barrels, and indicia of Argentina, such as cacti and llamas, all of which were not present in Ms Martin’s work. The absence of consumer evidence of confusion reinforced the judge’s conclusion on the Second and Third Labels.

3. Damage

Having established goodwill and misrepresentation in respect of the First Label, damage, including dilution of Ms Martin’s signature style, followed. Thus, GM Drinks was liable to Ms Martin for passing off for the First Label Products.

Joint tortfeasorship

Applying the 2024 Supreme Court decision in Lifestyle Equities v Ahmed, the judge found that although BSH and Mr Patch were not primary infringers (as they did not issue the First Label Products to the public) they became joint tortfeasors once on notice – i.e. after 12 April 2020 – that the First Label was infringing. Both knew that the Products were being circulated in the UK and had knowledge of the essential elements of the tort. Therefore, they were jointly liable with GM Drinks for copyright infringement of the First Label, pursuant to sections 18, 22, 23(a) and 23(b) CDPA.

However, neither was a joint tortfeasor for passing off, as they lacked awareness of the essential facts that made GM Drinks’ acts tortious.

Practical takeaways

The judgment highlights a number of key points for businesses to bear in mind, including the following:

1. UK distributors are responsible for ensuring foreign-supplied goods comply with UK IP laws, if they wish to avoid liability for IP infringement. They should not rely on suppliers to have carried out adequate clearance searches.
2. The case provides a helpful reminder of the approach courts take to assess whether a “substantial part” of a work has been taken in the context of copyright infringement and offers useful guidance on law governing joint tortfeasorship.
3. Only the issues included in the List of Issues will be decided during trial. In this case, moral rights and flagrancy were not listed, and the judge emphasised that parties cannot raise points at trial without prior permission.
4. Lastly, the case demonstrates that some acts of copyright infringement and passing off are strict liability torts. Knowledge is irrelevant in determining liability, meaning GM Drinks and Mr Patch were held liable even without knowing the Products infringed.

Need assistance?

This is for general information only and does not constitute legal advice. Should you require advice on this or any other topic then please contact hlk@hlk-ip.com or your usual HLK advisor.