SUCKERS FOR PUNISHMENT

Suckers for punishment: Qualtex go down in CA

The IPKat has just learned, via All England Direct, that the Court of Appeal has dismissed what he assumed was always going to be a hopeless appeal in Dyson Ltd v Qualtex (UK) Ltd [2006] EWCA Civ 166 (Tuckey, Jacob and Lloyd LJJ).

Dyson, a company that designed and made vacuum cleaners, sued Qualtex for infringing its unregistered design right after Qualtex started making spare parts for Dyson cleaners. The parts (known as ‘pattern parts’) were deliberately made to look as similar as possible to the originals. Qualtext said it was allowed to, since the spare parts fell within the 'must-fit' and 'must'match' exceptions to s. 213 of the Copyright, Designs and Patents Act 1988. It argued that s.213 applied to significant areas of most of the parts; that some aspects of the designs in any event ineligible for protection, being merely surface decorations and that Dyson's designs were not original for the purposes of unregistered design right since they were commonplace.

At trial Mr Justice Mann held that Dyson's rights had been infringed. Essentially he found (i) that the parts did not fall within the ‘must fit’ and ‘must match’ exceptions to design right, (ii) that Dyson's designs were not mere surface decorations and (iii) that they were original for the purposes of unregistered design right since they were not commonplace. The judge added that, for the purposes of establishing the duration of unregistered design right (which is calculated by relation to the 'making available for sale or hire' of articles made to a design), articles were ‘made available for sale or hire’ on their first actual delivery: merely taking orders for future delivery was not enough for this purpose.

Qualtex appealed, maintaining that Mann J (i) misconstrued ‘must fit’ so as to exclude cases where parts of an article did not touch; (ii) was wrong to hold that the 'must fit' exclusion could not apply where the articles were designed sequentially and (iii) failed to adopt a practical approach to the exclusion. As to the ‘must match’ exception, Mann J was (iv) wrong to apply the test of considering whether there was dependency of the kind, or to the extent, which would make the later article in question radically different in appearance if the earlier article were not the shape it was (the ‘radically different’ test). As for surface decoration, Mann J (v) should not have limited this exclusion to decorating a surface that was already there, the exclusion dealing with 3D shapes only. Qualtex also argued that (vi) some of the designs were ‘commonplace’, given the widespread knowledge and virtually standard design for all vacuum cleaners at the time. Finally, (vii) an article was ‘made available for sale’ when orders for the article were actually taken.

Below, right: the latest Dyson model has a remarkable degree of functionality as well as a riveting design ...

The Court of Appeal dismissed Qualtex's appeal,pretty well affirming both the conclusions of Mann J and the manner in which he reached them.

* As to 'must match', one should ask whether there was a feature of shape of the part which was dependent on the appearance of the whole machine. The judge’s ‘radically different in appearance’ test was just a way of looking at dependency. If there was freedom in making a design, then there was no dependency.

* The provision had to be approached bearing in mind that Parliament had not intended to exclude all spare parts, or even all externally visible portions of spare parts.

* Mann J did not actually hold that a surface decoration could not be three-dimensional.

* The exclusion of surface decoration covered what were essentially 2D designs on a 3D article: there was no reason to limit surface decoration to a surface that was already there.

* After finding a design to be ‘original’ in the copyright sense, one then had to ask whether that aspect was ‘commonplace’. A design that became very well known could not lose the protection of design right by becoming well known.

* Mann J was entitled to find that articles were ‘made available for sale or hire’ on their first actual delivery, since the natural meaning of the expression ‘made available’ meant something that was actually in existence.

The IPKat assumes that the appeal was something to do with the large amounts at stake, rather than on the merits of the various points on which the appeal was based. Merpel says, on this occasion we agree: but the complexity and opacity of draftsmanship of the design provisions of the CDPA means that you can never be entirely sure what some of its provisions mean: perhaps we should enunciate a principle that the interpretation of any piece of statute that you have to read six times in order to understand it even once is always worth appealing against.

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