Lambretta Clothing Company Ltd v Teddy Smith (UK) Ltd
| Jurisdiction | England & Wales |
| Judge | The Honourable Mr Justice ETHERTON,Mr Justice Etherton |
| Judgment Date | 23 May 2003 |
| Neutral Citation | [2003] EWHC 1204 (Ch) |
| Court | Chancery Division |
| Date | 23 May 2003 |
| Docket Number | Case No: HC 02 C0550 |
[2003] EWHC 1204 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
Strand, London, WC2A 2LL
The Honourable Mr Justice Etherton
Case No: HC 02 C0550
Mr D Campbell (instructed by Gosschalks) for the Claimant
Mr R Arnold (instructed by Briffa and Kimbells LLP) for the Defendants
Hearing dates: 30th April-7th May 2003
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
| Paragraph | |
| Introduction | 1 —4 |
| The factual background | 5 —21 |
| Representation | 22 |
| Design right | 23 —52 |
| Exclusion from copyright protection: 1988 Act s.51 | 53 —79 |
| The factual case | 80 |
| The witnesses | 81 —85 |
| The factual case on design right | 86 —124 |
| The factual case on copyright | 125 —128 |
| Decision | 129 |
Introduction
In these proceedings the Claimant, Lambretta Clothing Company Limited ("Lambretta") claims damages and other relief for infringement of design right which it claims in the design of a track top, and copyright which it claims in two documents incorporating drawings and specifications for the track top.
There are two Defendants to the proceedings. The First Defendant is Teddy Smith (UK) Limited ("Teddy Smith"). The Second Defendant is Next Retail plc ("Next"). There is no commercial or other relevant connection between Teddy Smith and Next. Each separately designed and caused to be manufactured a track top which Lambretta claims infringed its design right and copyright.
Teddy Smith is the sole UK distributor for Teddy Smith SA, a clothes designer and producer based in France.
Next sells fashion goods for men, women and children, along with home furnishings and accessories, through about 340 retail stores throughout the United Kingdom and the Republic of Ireland. In addition to its retail stores, Next operates a mail order business through the Next "Directory".
The factual background
Lambretta was incorporated in February 1997. Its founders were Robert Harmer, Robert Cohen and Stanley Cohen. They are its directors. It designs and produces fashion clothing for young people. It has the sole right to use the Lambretta logo and the Lambretta name. That name is associated with Lambretta scooters, an Italian scooter company whose scooters were extremely popular in the 1960s. The original idea behind Lambretta was to introduce a range of clothing which was evocative of the " mod" youth movement of the 1960s, that is to say a range of clothing based upon the 1960s styles but with a more contemporary feel.
Mr Harmer is the design director of Lambretta.
In June 2000 Mr Harmer designed a track top ("the Lambretta Track Top") with a blue body, red raglan sleeves, two white trim stripes along the sleeves, a white zip, two vertical welt pockets, a high neck, elasticised and ribbed material for the cuffs and waistband, a white stitched Lambretta logo on the left chest, and a large white stitched logo across the back of the garment. The Lambretta Track Top was designed as fashionwear, but was based on the idea of a sports tracksuit top of the kind marketed from the early 1970s. In the language of the fashion industry, it has a "retro-vintage" theme.
In designing the Lambretta Track Top, Mr Harmer used as a base a sample tracksuit top supplied by Lambretta's manufacturer, RHM. That sample tracksuit top was a single colour white garment. It was a standard tracksuit top, save that it had been made, at the request of Lambretta, in a knit known as French rib, which is a fabric not normally used for tracksuit tops.
The design for the Lambretta Track Top was recorded by Mr Harmer in two documents, which were sent to Lambretta's manufacturer on 12 June 2000. The first document ("LMK 5310") features a coloured representation of the front of the garment, and part of the rear of the garment. On the bottom part of that document there are handwritten references to the shades of colour to be used in the manufacture of the garment. That document was given Lambretta's style reference "LMK 5310".
The second document recording the design of the Lambretta Track Top has, in its top part, an uncoloured representation of the front of the garment and half of its rear. In the lower part of the document there are details of the specifications of the garment, including details of the fabric, lapels, collar, armholes, yoke, hem, placket, cuffs, pockets, sleeves, logos on the front and back, zip, and the colours to be used. The specification required the knit of the Lambretta Track Top to be French rib. That document ("the Specification Document") does not bear any separate reference number, but would have been attached to LMK 5310 when they were sent to the manufacturer.
The navy, white and red colours of the Lambretta Track Top were distinctive features of Lambretta's products, as was the Lambretta logo. The navy, white and red colours were intended to be reminiscent of the colours of the Union flag, and were used for most of the ranges Mr Harmer designed for Lambretta, since Lambretta was intended to be a retro-inspired street wear brand.
The design for the Lambretta Track Top was created with a view to producing the garments so that they would be available to be marketed at the Fashion Trade Exhibition 40 Degrees at Earls Court, London, in August 2000.
Lambretta alleges that the Lambretta Track Top was extremely popular and successful, and it sold in the region of 20,000 of those garments between August 2000 and February 2002. Lambretta's evidence, to which I shall refer in detail in due course, was that the garments were delivered to Lambretta by the manufacturer in December 2000, and were immediately sent to retail outlets for sale to the public. Lambretta's evidence was that, in the first season, the Lambretta Track Top was sold only in the red, white and blue colourways. Thereafter it was sold in numerous other colourways. The Lambretta Track Top, in its original colourways of red, white and blue, was advertised in about March 2001 in the fashion magazines FHM and Loaded.
In May 2001 Mr Christian Sansat designed a track top ("the Teddy Smith Track Top") for Teddy Smith SA for the spring/summer 2002 collection. Mr Sansat has been the head of the design office of Teddy Smith SA since 1996, and is responsible for a department of some 20 people based at the company's premises in France.
Teddy Smith SA called the design of the Teddy Smith Track Top "Steevy". The Teddy Smith Track Top is, like the Lambretta Track Top, a zip through top, with blue body, red raglan sleeves, high neck, white zip, elasticated hem and cuffs, and vertical welt pockets. It has a stitched white Teddy Smith logo on the left breast and a large white stitched Teddy Smith logo across the back of the garment. It is, like the Lambretta Track Top, made in French rib. Although there are differences in the composition and construction of the Lambretta Track Top and the Teddy Smith Track Top, both garments appear alike, at first glance.
The Teddy Smith Track Top was sold by Teddy Smith SA in France from January 2002. Teddy Smith purchased 4722 units for sale in the United Kingdom and Ireland.
In early June 2001 Next designed a zip-through track top ("the Next Track Top"), with a blue body, red raglan sleeves, two over-arm white stripes, and a white zip, for the spring/summer 2002 season. Like the Lambretta Track Top, the Next Track Top has a high neck, elasticated cuffs, elasticated waistband, two vertical welt pockets, and a stitched logo (in the form of the letter N) on the left breast. Again, although there are a number of differences in the construction and composition of the Lambretta Track Top and the Next Track Top, both garments appear alike, at first glance.
The Next Track Top featured in the spring/summer 2002 Next Directory. The garment was available in different colourways to the red, blue and white design. The breast logo was used on the version of the garment that was sold through the Directory, but was not included on the version sold through retail outlets.
Teddy Smith and Next respectively deny that the Teddy Smith Track Top and the Next Track Top were copied directly or indirectly from LMK 5310 or the Specification Document and, in particular, that their respective Track Tops were copied from an actual Lambretta Track Top.
In early 2002 Mr Harmer learned of the Teddy Smith Track Top and the Next Track Top, and purchased them both.
The present proceedings were commenced on 27 February 2002.
Representation
At the trial of the proceedings before me Mr Douglas Campbell, counsel, appeared for Lambretta. Mr Richard Arnold QC appeared for both Teddy Smith and Next.
Design right
Lambretta claims it has, and has always had, design right in the design of the Lambretta Track Top. This is denied by Next and Teddy Smith.
Part III of the Copyright, Designs and Patents Act 1988 ("the 1988 Act") defines design right, and the rights and remedies of design right owners.
Design right was introduced into English law by Part III of the 1988 Act. A clear and useful summary of the background to Part III of the 1988 Act is contained in paragraphs 53.1 to 53.3 of The Modern Law of Copyright and Designs (third ed.) by Laddie, Prescott and Vitoria, the relevant parts of which are as follows:
"53.1. In the 15 years preceding the passing of the Copyright, Designs and Patents Act 1988 there had been an explosion of litigation in which copyright had been used to attack industrial plagiarism. The copyright which existed...
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