LAMBRETTA APPEAL STALLS IN DESIGN INFRINGEMENT ACTION

Not yet publicly available, but posted on today’s All England Direct  subscription-only service (owned by LexisNexis) is the Court of Appeal’s ruling in Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd and another, case [2004] EWCA Civ 886.
Lambretta designed an article of clothing with a ‘retro-vintage’ theme that recalled the sportswear of the 1970s and early 1980s. The shape itself, including the panelling, of the garment was old and owed nothing to the designer; his contribution had been the choice of colours (blue for the body, red for the arms and white for the zip), the white stripes on the garment and the size and positioning of Lambretta’s logo. Having learnt that what were considered to be copies of the garment were being sold by Teddy Smith, Lambretta brought an action for infringement of unregistered design right (UDR) and/or infringement of artistic copyright. The trial judge held, on the facts, that Teddy Smith’s article had been copied from Lambretta’s design but that, as a matter of law, UDR might not subsist in the design and that there was a defence for infringement of artistic copyright under s 51 of the Copyright, Designs and Patents Act 1988. Lambretta appealed. The Court of Appeal, strengthened by the presence of leading IP judge Lord Justice Jacob, dismissed the appeal.

1. Mere choice of colourways for a standard track top was not “an aspect of the shape or configuration of an article or part of an article” that would attract design protection and, in any event, the exclusion of ‘surface decoration’ from the scope of UDR protection applied in this case. It was true, but beguilingly simple, to say that the red, blue and white components of Lambretta’s garment were ‘configured’ together. However, in truth, it was the components that had been configured to produce the ultimate complete article: their colour had nothing to do with that configuration.
   
2. it was true that the parts of the garment were dyed right through, any realistic and practical construction of the words ‘surface decoration’ had to cover both the case where a surface was covered with a thin layer and where the decoration ran right through the article. To hold otherwise would mean that whether or not UDR could subsist in two different articles which exactly the same outward appearance would depend on how deep the colours went; Parliament could not have intended anything so capricious. It followed that the judge had properly concluded that UDR might not subsist in the design of Lambretta’s article.
   
3. (Lord Justice Mance dissenting) The judge had properly held that s 51 barred Lambretta’s claim. Although there was no doubt that the designer’s drawing was a ‘design document’, the fact that ‘surface decoration’ was excluded from the definition of ‘design’ for purposes of s 51 was irrelevant. The colourways were not just colours in the abstract, they were colours applied to shapes. Accordingly neither physically nor conceptually might they exist, except as the shapes of the parts of the article. It followed that the surface decoration on Lambretta’s garment could not subsist on other substrates in the same way as might a picture or logo. Thus if artistic copyright were to be enforced, it would only be enforced in respect of the whole design drawing and that was expressly not allowed by s 51. That conclusion was reinforced by the bizarre oddity that that Lambretta would have a much longer period of protection than if it had a proper UDR, for instance by actually designing a new garment rather than just colouring an old one.

The IPKat notes that the Court of Appeal commented on the new European unregistered design right. Article 3(a) of Council Regulation 6/2002 on Community designs, although not in force at the time when the events in this case occurred and although lasting for a shorter period than British UDR, clearly would cover this case. The Court added that whether the UK still needs its own unregistered design right on top of that provided by the regulation is perhaps also open to question.
 
STOP PRESS. The full text of the judgment, together with full colour pictures of the Lambretta designs, is now available on BAILII.
 
Design Museum here; Design Centre here; simple designs here