Marketing of the Lulu chair violated the copyright of the Tripp Trapp chair

Date 28 okt. 2011

 

On 28 June 2011, the Danish High Court decided in a case in which the Danish furniture manufacturer Lulu Baby ApS’ childrens’ chair Lulu (hereafter the ”Lulu Chair”) violated the copyright of the Tripp Trapp chair (hereafter the ”Tripp Trapp Chair”). Furthermore, the manufacturer violated the Marketing Practices Act and the Trades Marks Act in connection with the marketing of the Lulu chair by using the slogan ”The chair that grows with the child”.


The case in brief

Back in 2001, in its judgment of 5 June (U.2001.747 H), the High Court granted the Tripp Trapp Chair copyright protection against closely resembling copies based on its ground-breaking and unique design.


In its production of the Lulu Chair, Lulu Baby ApS had created a similar childrens’ chair which was adjustable and could be adapted to fit children of different ages, just as the Tripp Trapp Chair. While the special characteristics of the Tripp Trapp Chair’s shaping was its straight lines, rigid shape and the use of the ”L shape” for the side pieces and the horizontal legs, the Lulu Chair used something which reminded of a T shape instead. Lulu Baby ApS marketed the Lulu Chair with the slogan ”The chair that grows with the child”.


Based on the above, furniture designer Peter Opsvik, who is the creator of the Tripp Trapp Chair and Stokke AS, who holds the licence to the rights of the chair, including negotiation, filed a case against Lulu Baby ApS for replication of the Tripp Trapp Chair.


During the court case, the expert stated that the well-informed and aware consumer would not confuse the two chairs, but that the chairs could be confused by a consumer with a limited knowledge of furniture. 


Legal basis

The legal protection of creations such as art, inventions and business characteristics is protected by a number of different laws depending on the kind of creation involved. The laws in question are primarily the Copyright Act, the Patents Act, the Utility Model Act, the Designs Act and the Trades Marks Act, just as a certain degree of protection may be found in the Marketing Practices Act.


In relation to this case, the relevant provisions may be found in the Copyright Act (hereafter the ”CA”), the Trades Marks Act (hereafter the “TMA”) and the Marketing Practices Act (hereafter the “MPA”).


It is stated in Section 1(1) of the CA that ”those who create a literary or artistic work hold the copyright to the work, including applied art, and as a consequence hereof, as a starting point, has the sole and exclusive right to dispose of the work and make it available to the public”.


Reproductions, meaning any direct or indirect, temporary or permanent and full or partial reproduction, are encompassed by the above. Such copyright protection was granted the Tripp Trapp Chair by the High Court in 2001 in the case U.2001.747H.  


Section 4(1) of the TMA protects the owner of a trade mark against others using signs for commercial purposes which are identical with the trade mark or confusingly similar hereto. The latter is often the case when a consumer mistakes two trade marks, but may also be the case if the consumer may see the difference between the two brands, but because of certain similarities, mistakenly believes that the article comes from the same manufacturer.


In close connection with the copyright laws, Section 18 of the MPA protects copyright owners against other traders using business characteristics and the like, including logos, slogans etc., which do not rightfully belong to them. Traders’ use of own characteristics is also prohibited if the use is suitable to cause confusion with the copyright owner’s characteristics.


Apart from the protection of artistic creations pursuant to the abovementioned, it follows from the MPA, that traders are also protected against competitors’ comparing commercials. Especially, if the commercial involves articles which fulfil the same needs or serve the same purpose, cf. Section 5(1), and that other traders have a general obligation to show good marketing practice in consideration of the consumers, traders and common public interest, cf. Section 1(1).


The High Court's Decision

The High Court considered the question of violation of the Tripp Trapp Chair’s copyright based on the former high court decision from 2001 where the chair’s copyright protection against closely resembling copies was established.


The High Court paid attention to the appointed expert’s statements from which it appeared that the two chairs – despite of their different appearance – were considered to be largely identical in size, shape and function and with a similar dimensioning in materials and supporting structure. Furthermore, the expert emphasised that the chairs’ angles, main measurements and main shape as well as security strap were identically shaped and, moreover, that the Lulu Chair used uniform side pieces. The fact that the way to assemble the chairs and the types of wood used were dissimilar did not sufficiently counterbalance this.


Therefore, the High Court found that, regardless of the expert’s statement on confusion, the Lulu Chair could not have been created without knowledge of the Tripp Trapp Chair and that it was created by means of imitation without an independent effort from Lulu Baby ApS. Overall, the Lulu Chair resembled the Tripp Trapp Chair to a considerable extent and, consequently, the two chairs could be confused by ordinary consumers. Despite of the narrow area which generally protects applied art, the Tripp Trapp Chair’s copyright was found to have been violated.


Subsequently, the High Court assessed the matter of Lulu Baby ApS’ marketing of the Lulu Chair with the slogan ”The chair that grows with the child”. The court found that Stokke AS’ massive marketing of the Tripp Trapp Chair under this slogan throughout a number of years had achieved a sufficiently distinctive character to make Lulu Baby ApS’ use of the slogan “The chair that grows with the child” a violation of Stokke AS’ trademark. Thus, Lulu Baby AS’ use of the slogan and the imprint on the packaging constituted a violation of the MPA.


The High Court thus upheld the decision of the Maritime and Commercial Court. Lulu Baby AS was ordered to pay total damages of DKK 1,250,000, a fine of DKK 20,000 and a compensation of DKK 30,000 for non-economic damage.

 

Future implications

The High Court’s decision illustrates the extent of the legal protection of originators and their creations, in that the Lulu Chair, despite obvious differences from the Tripp Trapp Chair, was found to be a close replica, especially as regards appearance. The judgment shows that the protection must be regarded rather extensive. Furthermore, the judgment illustrates that a slogan may achieve legal trademark protection through distinctiveness acquired through use, regardless of whether the description only targets a characteristic of the product. Especially in relation to marketing, and risk of confusion in connection herewith, the judgment must be considered to become important.

 


If you have any questions or require additional information on the High Court’s decision, please contact Partner Thomas Weitemeyer (twe@mwblaw.dk), Junior Associate Pinar Gökcen (pgo@mwblaw.dk) or Junior Associate Mattias Vilhelm Warnøe Nielsen (mvn@mwblaw.dk).


The above does not constitute legal counselling and Moalem Weitemeyer Bendtsen does not warrant the accuracy of the information. With the above text, Moalem Weitemeyer Bendtsen has not assumed responsibility of any kind as a consequence of a reader’s use of the above as a basis of decisions or considerations