Factual and Procedural Background
In June 2000, Plaintiff designed a tracktop featuring specific colourways and design elements, including two white stripes on the arms and a distinctive logo placement. The garment’s shape was pre-existing, with Plaintiff’s contribution focused on colour choices and logo positioning. The design had a retro-vintage theme inspired by 1970s and 1980s sportswear, with colour choices reflecting the Union flag. The tracktops were first exhibited in August 2000 and sold from December 2000, with sales reportedly successful. In February 2002, Plaintiff discovered garments sold by Defendant A and Defendant B that Plaintiff considered to be copies. Plaintiff sued both for infringement of unregistered design right (UDR) or alternatively for infringement of artistic copyright.
At first instance, the court held that UDR could not subsist in the design and that a statutory defence under s.51 of the Copyright, Designs and Patents Act 1988 applied to the artistic copyright claim. The court found Defendant B’s tracktop was copied from Plaintiff’s design, but not Defendant A’s. Plaintiff appealed the legal findings, with Defendant B cross-appealing several issues, including the finding of copying. Defendant A is not party to the appeal as no copying was found against them.
Legal Issues Presented
- Whether UDR subsists in the juxtaposition of colourways or whether these are aspects of shape or configuration excluded by statute.
- Whether the colourways constitute surface decoration excluded from UDR protection.
- Whether s.51 of the Copyright, Designs and Patents Act 1988 provides a defence to infringement of artistic copyright claims.
- Whether the design is "commonplace in the design field in question" under s.213(4).
- Whether the judge’s finding that Defendant B’s designer copied Plaintiff’s design should be upheld or retried, including admissibility of fresh evidence on a "French rib" stitching point and interpretation of evidence.
- If UDR subsists, whether Defendant B’s garment is made exactly or substantially to the design.
- If artistic copyright is enforceable, whether Defendant B’s garment substantially reproduces Plaintiff’s drawing or a substantial part thereof.
- Whether the judge’s costs decision regarding Defendant B was correct or clearly wrong.
Arguments of the Parties
Appellant's Arguments
- UDR does not subsist in mere colourways as these are not aspects of shape or configuration but surface decoration.
- The statutory defence under s.51 bars claims for artistic copyright infringement in relation to design documents embodying surface decoration.
- The design field was wrongly narrowed by the trial judge; a broader design field including sportswear and leisurewear should apply.
- The design’s colourways were commonplace in the relevant field at the time of creation.
- The "French rib" stitching point was raised late and unfairly, and fresh evidence should be admitted to show it is not unique.
- If UDR or copyright subsists, Defendant B’s garment substantially reproduces Plaintiff’s design.
- The costs decision is unnecessary to address given the substantive conclusions.
Appellee's Arguments
- UDR does not subsist in the design as claimed.
- Defendant B’s tracktop was copied from Plaintiff’s design.
- The statutory defence under s.51 applies to bar the artistic copyright claim.
- The judge’s findings on the design field and commonplaceness were correct.
- The "French rib" stitching was a significant indicium of copying and Defendant B had opportunity to address it at trial.
- The costs order was appropriate.
Table of Precedents Cited
| Precedent |
Rule or Principle Cited For |
Application by the Court |
| Farmers Build v Carier [1993] RPC 461 |
Definition of "original" in design right as equivalent to copyright originality. |
Confirmed that originality requires creation by the designer and excludes copying; also that "commonplace" designs do not qualify for UDR. |
| Kestos v Kempat (1934) 53 RPC 139 |
Meaning and equivalence of "shape" and "configuration" in design law. |
Held shape and configuration are practically synonymous, relating to three-dimensional form, as opposed to pattern or ornament. |
| Cow v Cannon [1959] RPC 344 |
Distinction between shape/configuration and pattern/ornament. |
Confirmed ribbing as a feature of configuration, not pattern; relevant to whether features can be protected under design right. |
| Sommer Allibert (UK) v Flair Plastics [1987] RPC 599 |
Surface features as part of shape or configuration. |
Grooves on plastic chairs held to be features of shape or configuration, supporting the interpretation of design features. |
| Mackie Designs v Behringer [1999] RPC 717 |
Whether circuit diagrams constitute design documents showing configuration. |
Held circuit diagrams showed configuration of an article, but court criticized this broad interpretation for schematic nature. |
| Mark Wilkinson Furniture v Woodcraft Designs [1998] FSR 63 |
Scope of surface decoration exclusion and interaction with artistic copyright. |
Confirmed that three-dimensional embellishments are excluded from design right but may have artistic copyright protection. |
| Network Ten v TCN Channel Nine [2004] HCA 14 |
Rejection of "anything worth copying is worth protecting" principle in copyright. |
Supported careful statutory interpretation over expansive protection; cited to reject assumptions about protection gaps. |
| University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 |
"What is worth copying is worth protecting" principle in copyright. |
Discussed as a starting point but with caution against overextension in copyright infringement claims. |
| Ibcos Computers Ltd v Barclays Mercantile Highland Finance Ltd [1994] FSR 275 |
Limits on copyright infringement proof; not all copying equals infringement. |
Used to caution against assuming copying automatically results in infringement without substantial part analysis. |
| Cantor Fitzgerald International v Tradition (UK) Ltd [2000] RPC 95 |
Further guidance on copyright infringement and substantial part. |
Supported the principle that copying alone does not conclusively prove infringement. |
| Scholes Windows v Magnet [2002] FSR 172 |
Definition of "design field" and approach to "commonplace" in design right. |
Upheld broad definition of design field and emphasized fact-based assessment of commonplaceness. |
| Rockwater v Technip France [2004] EWCA (Civ) 381 |
Role and value of expert opinions on ultimate legal questions. |
Noted that experts’ opinions on questions like commonplaceness are admissible but of limited value without reasons. |
| N&P Windows v Cego [1989] FSR 56 |
Requirement to specify points of similarity in copying claims. |
Emphasized necessity of identifying points of similarity clearly in pleadings and witness statements for fairness. |
| Billhofer v Dixon [1990] FSR 105 |
Importance of inessentials in proving copying and substantial part in copyright. |
Held that small, redundant elements carry weight in establishing copying and infringement. |
| Designers Guild v Russell Williams [2001] FSR 11 |
Appellate review standard for trial judge’s findings on design right issues. |
Confirmed appellate court will only interfere if trial judge misdirected or erred in principle. |
Court's Reasoning and Analysis
The court examined the statutory framework governing unregistered design right (UDR) under s.213 of the Copyright, Designs and Patents Act 1988. It confirmed that UDR subsists only in original designs relating to the shape or configuration of an article and excludes surface decoration. The court analysed whether the colourways chosen by Plaintiff constituted an aspect of shape or configuration or merely surface decoration.
The court reviewed historical and authoritative case law, concluding that "shape" and "configuration" are essentially synonymous and relate to three-dimensional form. Colouring or patterning, including the juxtaposition of colourways, does not amount to shape or configuration and is excluded from UDR protection as surface decoration.
Further, the court held that s.51 provides a statutory defence to claims of artistic copyright infringement where the design document relates to the shape or configuration of an article other than surface decoration. Applying this, the court found that Plaintiff’s claim was barred by s.51 because the colourways were surface decoration and not protected under UDR or artistic copyright in this context.
Regarding the "commonplace" issue, the court reasoned that the design field should be broadly construed, encompassing leisurewear with a sporty image, including sportswear. Evidence showed that the colourways were commonplace in this field at the time of creation, undermining any claim to UDR protection based on originality.
On the issue of copying by Defendant B’s designer, the court acknowledged an inference of copying but identified procedural unfairness due to the late introduction of the "French rib" stitching argument and misinterpretation issues affecting the evidence. Given these factors and fresh evidence, the court expressed doubt over the correctness of the copying finding and indicated a retrial would be appropriate on this issue.
The court also addressed the interplay between design right and copyright, emphasizing that s.51 does not completely exclude copyright protection but limits it in relation to designs embodying shape or configuration excluding surface decoration. The court rejected the notion that any copying of a design document necessarily precludes copyright infringement claims.
Finally, the court noted that the costs issue was rendered moot by its substantive conclusions and did not require further consideration.
Holding and Implications
The court DISMISSED Plaintiff’s appeal on the basis that unregistered design right does not subsist in the colourways of the tracktop design, as these are surface decoration excluded from UDR protection. The statutory defence under s.51 bars claims for artistic copyright infringement in respect of the design document embodying such surface decoration. The court upheld the conclusion that the colourways were commonplace in the relevant design field, negating originality required for UDR.
However, due to procedural unfairness and evidential issues related to the "French rib" stitching point, the court indicated that the finding of copying by Defendant B’s designer could not be sustained without a retrial on that issue.
The decision clarifies the limits of UDR protection concerning colourways and surface decoration, emphasizing the statutory exclusions and the importance of the design field’s proper definition. It also underscores procedural fairness requirements in intellectual property litigation and the careful application of statutory defences.
No new precedent was established beyond the application of existing principles to the facts of this case. The direct effect is to affirm the statutory limits on UDR and artistic copyright protection in relation to surface decoration and to require a retrial on copying where procedural fairness concerns arise.