Dorling v Honnor Marine Ltd
| Jurisdiction | England & Wales |
| Judge | LORD JUSTICE HARMAN,LORD JUSTICE DANCKWERTS,LORD JUSTICE DAVIES |
| Judgment Date | 13 December 1963 |
| Judgment citation (vLex) | [1963] EWCA Civ J1213-2 |
| Date | 13 December 1963 |
| Court | Court of Appeal |
[1963] EWCA Civ J1213-2
Lord Justice Harman
Lord Justice Danckwerts and
Lord Justice Davies
In The Supreme Court of Judicature
Court of Appeal
Mr. A.D. RUSSELL-CLARKE (instructed by Messrs. Jaques & Co., Agents for Messrs. Bond, Pearce, Eliott & Knape, Plymouth) appeared on behalf of the Appellant (Plaintiff).
Mr. D.H. MERVYN DAVIES (instructed by Messrs. Gregory, Rowcliffe & Co., Agents for Messrs. Watts, Anthony, Yeo & Segar, Plymouth appeared on behalf of the Respondents (First Defendants).
This appeal arises out of a dispute concerning the plans for a sailing dinghy designed by the appellant and by him named the "Scorpion". In the court below there were two actions in one of which the appellant sued both the respondent and the personal defendant for breach of copyright in the design of the dinghy and in the other of which the personal defendant was the plaintiff and sued the appellant for money arising out of transactions between them concerned with the same subject-matter. In the latter action there is no appeal, and in the former one the several conflicts of fact which arose in the court below are no longer the subject of controversy to-day. It is in the first place now conceded that the plana produced by the appellant prima facie confer on him artistic copyright under the Copyright Act, 1956. On the other hand the appellant has abandoned his claim in respect of an alleged breach of confidence or of contract by the personal defendant. Moreover the appellant now concedes that no rights of his were infringed by the personal defendant and he appeals only against the company, which is the sole respondent to the appeal and is hereafter referred to as the respondent.
I shall only relate such facts as are necessary to make the remaining controversy intelligible. The appellant designed the dinghy in question in the year 1959. He was not at that time a boat builder and he licensed certain professional boat builders to build the "Scorpion". It was in this connection that he came in touch with the personal defendant, and the judge found, and it is not now disputed, that he conferred on that defendant a licence to build "Scorpions" which was current until June of 1960 and was only then terminated subject to a period of six months which the judge held to be a reasonable notice. An important feature of the "Scorpion" was that it was intended to make it possible for enthusiastic amateur boat builders as well as professionals to construct the craft themselves, and the main medium of sales took the form of sets or, as they were called, kits of parts which were sold ready machined and shaped, with elaborate directions forbuilding the boat. There were also sets of plans which it was desirable at any rate to acquire to help with the assembly. The instructions and plans were each accompanied by a number of photographs and drawings showing the parts or most of the parts of the kit and the boat in various stages of its construction.
So far as appears these kits were first put on the market at the Boat Show in January, 1960. They had been ordered on the appellant's behalf by the personal defendant and it is out of that transaction that the personal defendant's action arose. During the Spring of 1960 there were lengthy negotiations with a view to some form of association or partnership between the appellant and the, personal defendant and others for the purpose of setting up a boat-building business in connection with the "Scorpions", but these negotiations were abortive. After they broke down the personal defendant together with others formed the respondent company in July, 1960, and as from September, 1960, all the personal defendant's interests in his boat-building business were taken over and carried on by the respondent. It was apparently assumed by the respondent, but without justification as the judge held, that it was entitled to take over the personal defendant's licence to build the "Scorpion" and the kits of parts for it, and the respondent at loast from September, 1960, carried on the business of making and selling boats and kits of parts and advertising them to the public for sale. The exhibit "T.J.D.6" is a good examples it is headed "Scorpion — Build-her-yourself" and has the respondent's style at the foot. By this time the appellant had himself set up his own boat-building business and was holding himself out as the maker of "Scorpions" though he did so under a firm name, "Collins Marine Equipment", which he did not register under the Business Names Act. Exhibit "T.J.D.6" is a good example of the nature of the appellant's offer to the public. The matter came to a head in January, 1961, when both parties were proposing to advertise and display "Scorpions" at the Boat Show, and the appellant then issued this writ and obtained an immediate injunction from Mr. Justice Buckleyduring the vacation. When the court sat again in January, 1961, the respondent gave undertakings in the terms of the Notice of Motion and has not manufactured "Scorpions" or parts since that date. At the trial the learned judge held that the appellant's action aggainst the respondent, based on copyright, failed because the respondent had a statutory defence under section 10 (3) of the Copyright Act, 1956. The respondent had set up a further statutory defence under section 9 (8) of the same Act. That point the judge rejected and it is the subject of the cross-appeal.
By his Notice of Appeal the appellant seeks an injunction to restrain the respondent from infringing his copyright in the plans to which I have referred by reproducing and selling or offering for sale to the public these plans in the form of parts of boats. A further injunction is sought to restrain the sale of photographs of the like parts. The appellant also seeks a declaration that the manufacturs and sale of the kits of parts of the 'Scorpion" by the respondent is an infringement of the appellant's copyright in the plans.
The learned judge as I follow his judgment held that the appellant had lost his artistic copyright in the plans because he could by registering the design of his boat, or such design as he was entitled to register, under the Designs Act, 1949, have acquired such protection as that Act gives and not having done so he has by reason of section 7 of the 1949 Act lost the protection of the Copyright Act, 1956, and the question before us as I understand it is whether that decision is correct
This involves first some consideration of the Registered Designs Act, 1949. Section 1 of that Act permits a design to be registered by the proprietor "in respect of any article or set of articles provided the design be new or original", and "design" is defined as follows: "In this Act the expression 'design' means features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged solely bythe eye, "but does not include a method or principle of construction or features of shape or configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform". (4)"Rules made by the Board of Trade under this Act may provide for excluding from registration thereunder designs for such articles, being articles which are primarily literary or artistic in character, as the Board may think fit."
I therefore turn to the Rules and observe that under Rule 26 "there shall be excluded from registration under the Act designs to be applied to any of the follPwing articles, namely…" and under (3), amongst others "plans" — from which it follows that the plans in which the appellant claims copyright and in which he admittedly has copyright cannot be registered under the Act of 1949.
It was here agreed that (as I say) having regard to that Rule the appellant's plans of the boat as such could not be registered. It was, however, apparently conceded that a design in the form of the shape of the boat as a kind of silhouette was a registrable subject-matter.
For myself I find this conception of a design very difficult. I can understand it when it consists of a pattern to be applied to a material or an article, but where the designisition self the article as here the conception is awkward. The "Scorpion" sailing dinghy is what it is because it is of a certain shape or configuration. There is no question of applying one thing to another.
I now turn to section 7 of the Registered Designs Act, which is the nub of this case. Section 7 is headed "Right given by registration". Sub-section 1 reads: "The registration of a design under this Act shall give to the registered proprietor the copyright in the registered design, that is to say, the exclusive right in the United Kingdom and the Isle of Man to make or import for sale or for use for the purposes of any trade or business, or to sell, hire or offer for sale or hire, any article in respect ofwhich the design is registered…," That is to say that the registered proprietor has the exclusive right to make for sale any article to which the registered design has been applied. The mere making of the article otherwise than for sale is no offence. In addition the proprietor has the exclusive right "to make anything for enabling any such article to be made as aforesaid…-" Now as I see it this would give the proprietor the exclusive right to make an article which looked like that which he could register, namely something having the shape or outline of the "Scorpion". It would not, as I see it, give him an exclusive right to make articles shown in detail in the plans which are not registrable. It remains to consider whether the second part of the sub-section applies. This is a difficult question but on the whole in my...
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