L Woolley Jewellers Ltd and A & A Jewellery Ltd and A & A Jewellery (London) Ltd
| Jurisdiction | England & Wales |
| Judge | Lady Justice Arden,Lord Justice Robert Walker,Lord Justice Thorpe |
| Judgment Date | 31 July 2002 |
| Neutral Citation | [2002] EWCA Civ 1119 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | Case No: A3/2001/2899 |
| Date | 31 July 2002 |
[2002] EWCA Civ 1119
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE PATENTS COUNTY
COURT (His Honour Judge Fysh QC)
Royal Courts of Justice
Strand,
London, WC2A 2LL
Lord Justice Thorpe
Lord Justice Robert Walker and
Lady Justice Arden
Case No: A3/2001/2899
Miss Denise McFarland (instructed by Carvill & Johnson) for the Respondent
Mr Graham Shipley (instructed by Ralph Davis) for the Appellants
This is an appeal from the order dated 14 December 2002 of His Honour Judge Fysh QC sitting in the Patents County Court insofar as that order declared that the manufacture by the appellant of certain jewellery infringed the respondent's design right in the design referred to as LMC 125andmade consequential orders by way of an injunction, an order for delivery upandan order for an enquiryandcosts. There is no cross-appeal from the orders which the judge also made dismissing the respondent's claims for copyrightandpatent infringement.
The appellantsandthe respondent are jewellery manufacturers. The jewellery in question was a form of pendant which made use of obsoleteandimitation coins called "inserts". The inserts are retained in place by lugs within the mount. The lugs could also be formed within a bezel, being a captive ring with lugs placed over the circumference of the insert.
LMC 125 is a drawing of a pendant without an insert. LMC 125 was designed by a Mr Ball. The design relied on was the combination of "all the visible features of the bail, the bezel, mountinganddecorative edge". The pendant was intended to be worn round the neck on a chain,andthe bail was a piece of metal attached to the pendant through which a chain could be threaded. In the design, the area round the insert contains the outline of three hearts into which a bail has been inserted. The central portion of the bail has been cut out in the shape of a heart.
The relevant provisions of the Copyright, DesignsandPatents Act 1988 are as follows:—
"213 (1) Design right is a property right which subsists in accordance with this Part in an original design.
(2) In this Part 'design' means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article.
(3) Design right does not subsist in:
(a) a method or principle of construction
(b) features of shape or configuration of an article which:
(i) enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function, or
(ii) are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part, or
(c) surface decoration
(4) A design is not 'original' for the purposes of this Part if it is commonplace in the design field in question at the time of its creation.
(5) Design right subsists in a design only if the design qualifies for design right protection by reference to:
(a) the designer or the person by whom the design was commissioned or the designer employed (see sections 218and219), or
(b) the person by whomandcountry in which articles made to the design were first marketed (see section 220),
or in accordance with any Order under section 221 (power to make further provision with respect to qualification) …
214 (1) In this Part the 'designer', in relation to a design, means the person who creates it …
215 (1) The designer is the first owner of any design right in a design which is not created in pursuance of a commission or in the course of employment.
(2) Where a design is created in pursuance of a commission, the person commissioning the design is the first owner of any design right in it.
(3) Where, in a case not falling within subsection (2) a design is created by an employee in the course of his employment, his employer is the first owner of any design right in the design …
226 (1) The owner of design right in a design has the exclusive right to reproduce the design for commercial purposes:
(a) by making articles to that design, or
(b) by making a design document recording the design for the purpose of enabling such articles to be made.
(2) Reproduction of a design by making articles to the design means copying the design so as to produce articles exactly or substantially to that designandreferences in this Part to making articles to a design shall be construed accordingly …"
The judgment below
I need only summarise the parts of the judgment relevant to this appeal. The judge held that the relevant field for design right purposes was that of coin-mounted jewellery designandmanufacture. The design for which protection was sought was the pendant without any mounted disc. The judge held that the mountings of the disc had to be excluded from the scope of the design under the exclusions in section 213 (3)(b)(i)and(ii), known as the "must fit"and"must match" exclusion. There is no cross appeal on this point.
In the judge's judgment that left the decorative edge consisting of the three heart motifandthe bail, which took the wearer's chain. As to the repeating heart motif, the judge held that this was not original,andwas also commonplace. As to the bails, however, the judge held that the bail in this case was Mr Ball's own design. He changed the sizeandrevised its ornamentation as well. The judge found that the whole article was original,andthat the combination of the bailandthe repeating heart motif could not be said to be commonplace.
In reaching his conclusion, the judge rejected the argument that the primary purpose of the bails was functionalandthat their visual impact was minimal. The judge further held that though the bails may form a subordinate part of the pendants from a functional point of view, this was not the case visually. The judge further held that, in any event, since the issue was one of design right, it was unhelpful to dissect the overall contribution to the design of an article into elements, so as to isolate the functional subordination of a component. Accordingly, the judge held that it was the combination or ensemble of the various components that was originalandwhich enjoyed design rights.
The judge was satisfied that the bail, but not the repeating heart motif, had been copied. Accordingly, he had to consider the question whether copying the bail amounted to copying that constituted design right infringement. The judge prefaced his consideration of this question by expressing the belief that the approach of copyright law to the issue of "substantial part" was applicable to the law relating to design right. On that basis, it was appropriate to apply the approach of Lord HoffmannandLord Scott in Designers Guild Ltd v Russell Williams Textiles Ltd [2002] 1 WLR 2416. In that case, there was a claim for infringement of copyrightandthe copying in question was of parts of a design also consisting of a combination of elements, not all of which were the work of the designer who had created the combination. Applying this approach the judge held as follows:—
"119. The first...
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