Mackie Designs Inc v. Behringer Specialised studio equipment (UK) Ltd, Ulrich Bernhard Behringer & Behringer Spezielle Studiotechnik GmbH

Factual and Procedural Background

On 15 December 1998, Master Moncaster posed two legal questions for determination: whether the circuit diagrams relied upon by the Plaintiff qualify as design documents under section 51 of the Copyright Designs and Patents Act 1988 ("the CDPA") and, if so, whether the Defendants have a defence to copyright infringement under that section. The outcome of these questions would determine whether the Plaintiff's action would be dismissed or the Defendants' defence struck out. The factual basis for assessing the validity of the section 51 defence was drawn from the Plaintiff's expert evidence.

The case concerns the protection of circuit diagrams created after the CDPA came into effect, focusing on whether acts of making or copying articles to the design infringe copyright. The issue is significant as it affects the extent of protection available to foreign authors of circuit diagrams, particularly American authors who may lack design right protection in the UK. The Plaintiff alleges that the Defendants infringed copyright by reproducing circuit diagrams in material form through their circuit boards.

Legal Issues Presented

1. Whether the circuit diagrams relied on by the Plaintiff constitute design documents within the meaning of section 51 of the CDPA.
2. If the circuit diagrams are design documents, whether the Defendants have a defence to copyright infringement under section 51 of the CDPA.

Arguments of the Parties

Defendants' Arguments

• The Defendants contend that the circuit diagrams are design documents under section 51, which protects them from copyright infringement claims when making or copying articles to the design.
• They argue that the making of circuit boards according to the design is not an infringement but is explicitly authorised by section 51.
• The Defendants assert that the Plaintiff's claim amounts to copying an article made to the design, which is protected under the statutory defence.
• They also contend that the case is suitable for resolution under Order 14A, as there is no relevant factual dispute requiring extensive technical evidence.

Plaintiff's Arguments

• The Plaintiff challenges whether the circuit diagrams qualify as design documents within the meaning of section 51.
• The Plaintiff asserts that their circuit diagrams are artistic and literary works entitled to copyright protection beyond the scope of section 51's defence.
• The Plaintiff alleges indirect copying and substantial similarity in components and interconnections, claiming infringement of copyright in the circuit diagrams.
• The Plaintiff disputes the Defendants' interpretation of "design" and the applicability of section 51 to their claim.

Table of Precedents Cited

Court's Reasoning and Analysis

The court began by defining the statutory terms "design" and "design document" under section 51 of the CDPA, noting that a design includes any aspect of the shape or configuration of an article, excluding surface decoration, and that a design document is any record of such a design, including drawings or written descriptions.

The court emphasized that circuit diagrams show the components and their electrical interconnections, which constitute an aspect of the article's structure and design. It rejected the Defendants' narrower interpretation of "configuration" as limited to physical geometry or visual shape, instead adopting a broader meaning encompassing functional and dimensional aspects not necessarily visible to the eye.

Relying on precedent concerning design right protection for detailed dimensional differences, the court analogized that the selection and interconnection of components in a circuit diagram represent a central feature of the design and thus fall within the statutory definition.

The court acknowledged the legislative intent to exclude ordinary functional commercial articles from copyright protection but found that the statutory language of section 51 plainly applies to circuit diagrams as design documents. Consequently, the Defendants' acts of making or copying circuit boards according to the design fall within the statutory defence.

Regarding the Plaintiff's claim of indirect copying, the court held that since the Defendants admitted copying the Plaintiff's circuit board and using its circuit, this constituted making an article to the design, protected by section 51. The court also approved the view expressed in BBC Worldwide Ltd v Pally Screen Printing that section 51(1) bars copyright infringement claims based on making or copying articles to the design.

Finally, the court considered the procedural suitability of resolving the matter under Order 14A, concluding that the absence of relevant factual disputes and the nature of the technical questions made summary disposal appropriate.

Holding and Implications

The court's final decision was to DISPOSE OF the Plaintiff's action by dismissing it. The holding was that the circuit diagrams in question are design documents under section 51 of the CDPA, and the Defendants are entitled to the statutory defence against copyright infringement claims arising from making or copying articles to that design.

The direct consequence is that the Plaintiff's copyright claim based on the circuit diagrams fails. The court noted the broader legislative context that foreign authors, such as those from the United States, may lack design right protection in the UK, and the copyright protection available to them has been adjusted accordingly. No new precedent was established beyond the application of section 51 to circuit diagrams in this context.