Lambretta Clothing Company Ltd v Teddy Smith (UK) Ltd
| Jurisdiction | England & Wales |
| Judge | Lord Justice Mance,Lord Justice Sedley |
| Judgment Date | 15 July 2004 |
| Neutral Citation | [2004] EWCA Civ 886 |
| Docket Number | Case No: A3/2003/1331 HC 02 C0050 |
| Court | Court of Appeal (Civil Division) |
| Date | 15 July 2004 |
[2004] EWCA Civ 886
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE CHANCERY DIVISION
THE HON MR JUSTICE ETHERTON
Royal Courts of Justice
Strand,
London, WC2A 2LL
Lord Justice Sedley
Lord Justice Mance and
Lord Justice Jacob
Case No: A3/2003/1331
A3/2003/1331/B
HC 02 C0050
Roger Wyand QC and Michael Edenborough (instructed by Gosschalks) for the Claimant/Appellant
Richard Arnold QC (instructed by Briffa) for the Defendant/Respondent
Jacob LJ:
Introduction
In June 2000 Mr Robert Harmer of Lambretta (the appellants) designed a tracktop. This is his main design drawing:
Although it is perhaps not immediately self-evident, the drawing shows two white stripes along the arms (consider the elbows) . Beneath the drawing were the words:
"Red as FP [which means Fred Perry] tracksuit
White = White
Blue =; Navy attached"
A supplementary sheet added some details in writing. Of these it is only necessary to mention some. There was an instruction: "Fabric: Knit as yr tracksuit supplied." Other instructions were that there should be vertical welt pockets, that the stripes were to be 1cm wide and 2cm apart, that the zip should be white "as yr sample".
The shape (including the panelling) of the garment owes nothing to Mr Harmer. His contribution was the choice of colours (particularly blue for the body, red for the arms and white for the zip), the white stripes, and the size and positioning of the "Lambretta" logo – small on the front and large on the back. The shape of the garment itself was old and indeed Mr Harmer had an all-white sample supplied by the manufacturers when he did his work.
The design has a "retro-vintage" theme – recalling the sportswear of the 1970s and early 1980s. The very name "Lambretta" (to which the appellants have exclusive rights) brings to mind the 60s and 70s because of the well-known scooter of those times. The colours chosen were based on those in the Union flag.
Track-tops of this design were first shown by Lambretta at the Earls Court Fashion Trade Exhibition of August 2000. They were sold from December 2000 onwards. Sales were said to be very successful. Certainly sales figures were given in evidence (20,000 to February 2002) but I do not think the claimants are entitled to rely upon any commercial success. The claimants also sold the garment in other colourways (although the red, blue and white came first) and one has no idea whether those were as successful as the particular first colourways used. The claimants' solicitors had, before trial, refused disclosure of sales of the garment in other colourways expressly on the basis that commercial success was not relied upon.
There are three other points here. Firstly without some idea of the size of leisure track top market as a whole it is not really possible to say whether the sales figures are large or not. Nor is it possible to assess the importance of the particular colourway without knowing the sales of other colourways both by Lambretta and others. Finally it is in any event impossible to say how important to sales the colourways as such were – after all the garment has a clear "Lambretta" front logo and the logo emblazoned across the full width of the back. The logo must surely have played a significant part of any decision to buy.
In February 2002 Mr Harmer learned of what he considered to be copies of the garment being sold by Next and Teddy Smith. In due course Lambretta sued them both, alleging infringement of unregistered design right ("UDR") or alternatively infringement of artistic copyright.
Etherton J held ( [2003] RPC 41) that as a matter of law UDR could not subsist in the design and that there was a defence to the claim for infringement of artistic copyright provided by s.51 of the Copyright, Designs and Patents Act 1988 ("the Act") . On the facts he found that Teddy Smith's tracktop (designed by a M. Sansat) was copied from Lambretta's but that Next's was not. With the leave of the Judge Lambretta appeal the findings of law. There is no appeal in respect of the finding that Next did not copy – and since both forms of right invoked require proof of copying, they are not parties to this appeal.
Teddy Smith support Etherton J's findings of law. But, by permission of Aldous LJ, they also challenge a number of other issues decided against them. Most importantly they wish to challenge the decision that M. Sansat copied. For convenience I set out all the issues still alive:
i) Can UDR subsist in a juxtaposition of colourways – are they "an aspect of shape or configuration of the whole or part of an article?" (s.213(2)) .
ii) Are the colourways "surface decoration?" (s.213(3) (c))
iii) Does s.51 provide a defence in respect of artistic copyright?
iv) Is the design "commonplace in the design field in question," (s.213(4)) ?
v) Should the judge's finding that M. Sansat copied be upheld? Or should there be a retrial of this issue? This involves consideration of a two sub-issues – admissibility of fresh evidence on the so-called "French rib" point and on the quality of the interpretation of his evidence.
vi) If there is UDR in Mr Harmer's design, is the Teddy Smith garment made exactly or substantially to it, (s.226(1) and (2)) ?
vii) If artistic copyright is enforceable in Mr Harmer's drawing, does the Teddy Smith garment substantially reproduce it or a substantial part of it (s.17(1) in combination with s.16(3)) ?
viii) Even if the Judge was right in all his findings, was his decision on costs (that Teddy Smith should only have 40% of its costs) right or at least not shown to be clearly wrong?
There was a further issue, about whether Teddy Smith (UK) had the requisite knowledge for the purposes of s.22. Following the hearing, Mr Arnold QC for Teddy Smith accepted that s.18(1) would be a complete way round this point and accordingly abandoned it.
The nature of UDR
The key provision concerning subsistence of UDR with which this case is concerned is s.213. So far as is material this reads:
"s.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) …"
It is settled (see Farmers Build v Carier [1993] RPC 461) that, subject to subsection (4), "original" has the same meaning as in ordinary copyright – that is to say the design must be the creation of the designer, not copied from another. It does not mean "new" in the sense of patent or registered design law, i.e. absolutely new, irrespective of whether the designer by his own creative work made something which, by coincidence, is the same as the work of an earlier designer. Subsection (4) to adds this, however, that even if the design was the original work of its designer, the design will not qualify for UDR protection, if it is "commonplace in the design field in question." Such a qualification is not placed on ordinary copyright works such as artistic or literary works.
The nature and duration of the right is also more limited than that of many other intellectual property rights. Unlike patents or registered designs no true monopoly is conferred – infringement depends upon copying (see, s.236(1) and (2)) . The period of protection is limited too – 10 years from first marketing (with a licence of right for the last 5 years) and in any event 15 years from the end of the first recording of the design (whether marketed or not), see s.216. By contrast the period for patents is 20 years, for registered designs 25 years, for artistic and literary works 70 years from the year of death of the author and so on. Of particular interest here is the 25-year from first marketing period provided by s.52 for artistic works which consist of designs for artistic works (see ss. 51–52 referred to below) . Only the European Union unregistered design right provides for a lesser term namely 3 years from when the design was first made available within the EU (see Reg. 6/2002 Art.11) .
Issue (i) : Shape or configuration of an article?
I turn to the questions which arise under s.213. First is whether Mr Harmer's selection of colourways for a pre-existing design of tracktop are "the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article." It was common ground that this is the right question, even though it involves ignoring what a real designer would regard as significant features of Mr Harmer's actual design work. These are, of course, the two white stripes on the arms, and the size, colour and positioning of the Lambretta logo on front and back. The reason the law requires these features of the real-world design to be ignored is that they are purely "features of surface decoration", and hence within the exclusion provided in s.213(3) (c) . Although there is a dispute as to...
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