No unregistered design rights in clothing colourways

In Lambretta Clothing Company Limited v Teddy Smith (UK) Limited, the Court of Appeal of England and Wales has dismissed the plaintiff's claim that the defendant infringed its unregistered design rights in the colourways of a tracksuit top.

Lambretta Clothing Company Limited designed and sold a track top incorporating the colours of the Union flag of the United Kingdom. In February 2002 Lambretta discovered that clothing firms Next Retail Plc and Teddy Smith (UK) Limited were selling what it considered to be copies of the design. Lambretta sued for unregistered design right infringement or, alternatively, infringement of copyright. At first instance, the court held that unregistered design rights could not subsist in the design and that there was a defence to the claim for copyright infringement provided by Section 51 of the Copyright, Designs and Patents Act 1988.

It held that Teddy Smith had copied the Lambretta design but that Next had not. The case went to the Court of Appeal.

The key issues before the Court of Appeal were as follows:

• Can unregistered design rights subsist in a juxtaposition of colourways as "an aspect of shape or configuration of the whole or part of any article" (Section 213(2) of the act)?
  
  
• Are the colourways excluded as "surface decoration" (Section 213(3)(c))?
  
  
• Does Section 51 provide a defence to the copyright claim?

In the leading judgment, Lord Justice Jacob first noted that unregistered design rights arise automatically in an aspect of shape and configuration of an object made to a design. Protection is excluded for surface decoration detail. The meaning of "shape and configuration" for unregistered design rights is the same as that for registered designs. Jacob commented that a flat or two-dimensional design could have unregistered design rights in it. However, he upheld the lower court's decision that the mere choice of colourways of a standard track top was not an "aspect of shape or configuration".

Jacob next stated that even if he had decided issue one differently, the surface decoration exclusion must cover this case (notwithstanding that the garment was dyed right through). The result would be perverse if it depended on how deep the colours went. He therefore upheld the lower court's decision that unregistered design rights did not subsist in the Lambretta design.

Having decided that there were no unregistered design rights, Lambretta's alternative plea of copyright infringement was considered. Under Section 51, it is not a copyright infringement in a design document (unless it is an artistic work or a typeface) to copy an article made to the design. 'Design' is defined as any aspect of the shape or configuration of the whole or part of an article, other than surface decoration. The trial judge held that Teddy Smith's actions fell squarely within the natural meaning of Section 51 and it could not, therefore, have infringed copyright in the Lambretta drawing. Lambretta argued that Section 51 meant that design details, such as surface decoration and juxtaposition of colours were protected by copyright, to the extent they were not protected by unregistered design rights. Jacob disagreed. He held that it cannot always be correct to say that one receives either unregistered design rights or ordinary copyright with no gaps in the protection. This would, in effect, protect anything that was copied.

Lord Justice Mance dissented on the Section 51 issue. He was of the view that it was possible to consider whether Teddy Smith had copied a substantial part of the drawing by copying the colourways and the surface decoration.

The case demonstrates the pitfalls of trying to use unregistered design rights or copyright to protect colourway designs on garments. Designers can, however, take some comfort in the fact that their designs will attract Community unregistered protection albeit with a shorter duration of three years (provided the design has been made available to the public in the European Union on or after March 6 2002).

Joel Smith and Lucy Harold, Herbert Smith, London