About registered and unregistered design rights
Designs can enjoy up to 15 years of protection without the need
for any formalities by the designer in the UK. This unregistered
design right allows the owner of a design to stop anyone from
copying the design without permission.
A separate, more powerful right exists to protect the appearance
of a product for up to 25 years, obtained by registering the design
at the UK Designs Registry, part of the UK Intellectual Property
Office. Unlike an unregistered design right, the registered right
is a monopoly right: even the innocent sale of an item can infringe
the right if the item gives the same overall impression as the
registered design.
Unregistered rights in the UK protect aspects of the shape or
configuration of the whole or part of an article, but do not cover
surface decoration. So two-dimensional designs, such as textile or
wallpaper designs, are not protected, though such designs can
qualify for registered design protection. Registered design rights
can protect the whole or a part of a product, respecting product
features such as lines, contours, colours, shape, texture and
materials, whether in two-dimensions or three.
Pan-European rights also exist. Designs can be registered for
pan-European protection but there is also an unregistered Community
design right. Confusingly, this three-year right follows the
criteria of the registered design right, not the criteria of the
UK's unregistered right, so it can protect two-dimensional
designs.
The dispute
The case before the High Court was concerned only with the UK's
unregistered design right and copyright.
The Flashing Badge Company commissioned a freelance artist to
design 25 novelty badges, with slogans like "World's Best Dad",
"Princess" and "Happy Birthday". The company paid the freelancer to
assign the copyright in the designs to it and then began selling
the badges to the public.
Each badge had six flashing LEDs, positioned to suit each
design. A key feature of the design of each badge was that its
outline shape followed, and was dictated by, the outline of the
artistic design which formed the subject matter of the face of the
badge.
Justice Rimer gave an example in his judgment: "[In] the case of
the '16 TODAY' badge, the outline of the shape of the badge follows
the distinctive outline of the graphic design of the '16 TODAY',
the design also indicating the particular points at which the LEDs
are to be placed and the colour of each. If the graphic design on
the badge were removed, the same outline for the shape of the badge
would remain."
An entrepreneur, Brian Groves, who traded under the names
Flashing Badges by Virgo and Virgo Distribution, imported from
China and sold virtually identical copies of the flashing badges.
Groves disputed infringement of the badge designs, but accepted
that designs are artistic works in which copyright subsists.
Groves based his defence on a provision of the Copyright,
Designs and Patent Act of 1988, which states, at section 51, that
"it is not an infringement of any copyright in a design document …
for anything other than an artistic work or a typeface to make an
article to the design or to copy an article made to the
design."
A design document can be a drawing, a written description, a
photograph or data stored in a computer. Section 51 covers the
design of any aspect of the shape or configuration of the whole or
part of an article, other than surface decoration.
The ruling
Justice Rimer took the view that each drawing for the badges was
a "design document". Each drawing, he reasoned, incorporated a
design for an artistic work and a design for something other than
an artistic work, namely an article in the nature of a badge in the
same outline shape as the artistic work. Section 51 allows copying
of the latter element, but does not extend to surface decoration.
So it provides no defence to infringing the copyright in the
graphic design which provides the surface decoration of the
badges.
Justice Rimer distinguished a recent case in which clothing firm
Lambretta sued rival designer Teddy Smith over the design of a
tracksuit top. In that case the Court of Appeal had ruled that the
juxtaposition of colours did not enjoy an unregistered design right
because they did not form part of the shape or configuration of the
tracksuit top. Lord Justice Jacob said in that case that the
colours were surface decoration.
After the Lambretta case, some feared that designers were less
well protected by the UK's unregistered design right. The victory
for the Flashing Badge Company this month lends support to the
right.
Justice Rimer wrote: "It is true that the design of the shape of
the badge follows the outline of the design for the artistic work
on the face of each badge. But the latter design is in the nature
of a graphic design which is in no sense something which (unlike
the Lambretta colourways) can only exist as part of the shape of
the badge. It is a design which can be applied to any other
substrate and which, if so applied, would enjoy copyright
protection for the infringement of which section 51 would afford no
defence."
Alice Williams, an intellectual property lawyer with Pinsent
Masons, the law firm behind OUT-LAW.COM, said: "The fact that there
are so many ways to protect designs makes the whole subject very
complicated. In both Lambretta and the Flashing Badge cases,
though, the designers could have registered their creations and
probably avoided a courtroom. That's the key message for any
designer: it's a relatively cheap and straightforward process to
register a design and it removes all the uncertainty."
