Designs Cases

Question 1

Dyson v. Qualtex UK [2004] EWHC 2981 (Ch) & [2006] EWCA Civ 166; [2006] RPC 31

In relation to:

UKUDR Must Fit Exception

Answer 1

• Must Fit Exception (CDPA s.213(3)(b)(i)) interpretation
  
  • Does not matter if there are two ways of achieving necessary fit or connection between articles, if design chosen by design right owner is a way of achieving that fit or interface then it does not attract UDR, no matter how many alternative ways of achieving fit available
  • Article with which subject article is interfacing can be human body
  • Design right excluded even if design performs other function, e.g. it is decorative, additional functional does not exclude operation of the provision
• Dyson v Qualtex says that where an article comprises many smaller “articles” each individually excluded under exception, the design as a whole will still be protected, e.g. each part of a car could be excluded individually but car as a whole would still attract UKUDR

Question 2

Dyson v. Qualtex UK [2004] EWHC 2981 (Ch) & [2006] EWCA Civ 166; [2006] RPC 31

In relation to:

UKUDR Must Match Exception

Answer 2

• Interpretation of ‘Must Match’ exception (CDPA s. 213(3)(b)(ii))
  
  • When considering whether a feature of a part is excluded you have to consider whether there is a dependency of the kind, or to the extent, which would make the overally article in question radically different in appearance if the first article was not the shape it was
  • Feature with little visual significance is less likely to depend on the appearance of another
  • Defendant needs to show that as a practical matter there is a real need to copy a feature of the shape and configuration because of some design consideration to fall within exclusion
  • More design freedom, less room for exclusion

Question 3

Dyson v. Qualtex UK [2004] EWHC 2981 (Ch) & [2006] EWCA Civ 166; [2006] RPC 31

In relation to:

UKUDR Originality

Answer 3

• Interpretation of CDPA s.213(1) - design must be original in its design field to be protected
• Similar interpretation as classic copyright sense - due skill and/or labour
• For design to be original, court must be satisfied that design has not simply been copied from design of earlier article (legally or otherwise)
• However, one design may be very similar or even identical without being copied as original and independent shape may be very similar to or even identical and yet not be a copy

Question 4

Dyson v. Qualtex UK [2004] EWHC 2981 (Ch) & [2006] EWCA Civ 166; [2006] RPC 31

In relation to:

Not Common Place

Answer 4

• Upheld an interpretation of “Not Commonplace” exception under CDPA s. 213(4) meaning that all features excluded by statutory exceptions (e.g. must fit, must match etc.) are stripped away first and test for commonplaceness applies to what remains

Question 5

R. v Registered Designs Appeal Tribunal Ex p. Ford Motor Co Ltd. [1995] R.T.R.
68, [1994] RPC. 545 (Court of Appeal)

Answer 5

• Interpretation of Registered Designs and UDR “Must Match” exceptions (CDPA s. 213(3)(b)(ii):
  
  • Interpretation followed in Dyson v Qualtex
  • Where substitutions can be made without radically affecting the appearance or identity of the vehicle, then parts ‘not dependent on appearance of vehicle’ so must match exception does not apply
  • Relates to ‘must match’ exception for Registered and Unregistered designs
  • “I come now to the second group of components, such items as wing mirrors, wheels, seats and the steering wheel. All of them are visible on the car as sold but substitutions can be made without radically affecting the appearance or identity of the vehicle. It is such standard practice that I can take judicial notice of the fact that alternatives may be offered for items such as these and an owner may chose to substitute proprietary items in order to give his vehicle a sportier appearance, or (where a seat is concerned) for greater comfort, or for a variety of other reasons. Although if any substitution is made the owner may wish it to blend in the general style of vehicle, I am of the view that such items are not ‘dependent upon the appearance of another article.’””

Question 6

Farmers Build Ltd v Carier Bulk Materials Handling Ltd & Ors [1998] EWCA Civ
1900

Answer 6

• Facts: Concerned UKUDR for ‘Target’ slurry separator and its component parts
• Definition of design in CDPA 1988 s213(2) could encompass both the shape and configuration of the individual parts of separator and separator as a whole
• Definition of Originality in (s213(4)) should be construed in copyright sense
  
  • Quote: Time, labour and skill, sufficient to attract copyright protection, were expended by Mr Hagan in originating the designs of the individual parts. Similarly, he originated the assembly or combination of those parts in the TARGET machine as a whole. The designs are original in the “copyright sense”.
  • Must have been originated by designer and not merely been slavishly copied
• Test for determining whether design is commonplace from case:
  
  • (i) compare the design of the article in which design right was claimed with the design of other articles in the same field, including the alleged infringing article, as at the time of its creation;
  • (ii) consider whether the design for which protection was claimed had not simply been copied from the design of an earlier article;
  • (iii) decide whether an original design was commonplace, by determining how similar that design was to the design of similar articles in the same field of design made by persons other than the parties or persons connected with them. The closer the similarity of the designs, the more likely it was that the designs were commonplace. If a number of designers who worked independently in the same field produced similar designs by coincidence, the most likely explanation was that there was only one way of designing that article. In those circumstances it would be fair and reasonable to describe the design in question as commonplace.
• Musker’s interpretation of commonplace test:
  
  • determine similarities with other articles in field at date of creation from unconnected parties
  • filter out similarities due to direct copying or functional design constraints
  • compare each aspect of similarities and differences with other articles in the field, the more similarities, especially ones not derived from copying, the greater the chance that the design is “commonplace”

Question 7

A Fulton Company Ltd. v Totes Isotoner (UK) Ltd [2003] EWCA Civ 1514, [2004] RPC 16, (2004) 27(2) IPD 27010

Answer 7

• Design identified in UKUDR is a matter for the claimant who may specify the design of the whole or part of an article
• This allows the claimant to select and “trim” the part or parts of their own design for the action, (and therefore corresponding parts of infringing product for comparison)
• Specifics:
  
  • infringer copied most but not quite all of an umbrella case
  • Design claimed was defined as “the whole case minus a short side of the ‘cuff’”
  • Defendant contended in appeal that it’s changes resulted in a new and different design, and that the claimants definition of the infringed design was artificial
  • Judge dismissed appeal
    
    • Language of s213(2) established that design right existed in part of the design
    • Designer entitled under s226 to object to copying of part provided criteria for UKUDR met by that part
    • Fact that copying part might lead to different design did not justify the copying

Question 8

Neptune (Europe) Ltd v Devol Ktichens Ltd

Answer 8

• deletion of “any aspect of” in definition of design for UKUDR (CPA s213(2)) only applies to acts of infringement committed on or after 1 October 2014
• “aspects” had included disembodied features that were recognisable/discernable, parts referred to identifiable concrete parts
• followed and so gave strength to EWPCC precedent (Rolawn Ltd) that “design right protects physical manifestation of an idea, and does not protect the idea itself” - applied in this case by “the “asymmetry” of the cutaway is no more than an idea, or method or principle of construction, expressed at a high level of generality, in an attempt to find a common feature in two quite different shapes”
• Dynamic features of design - “the way in which particular parts of an article moved in use” may be protectable

Question 9

Case C-479/12, H. Gautzsch Großhandel GmbH & Co. KG v Münchener Boulevard Möbel Joseph Duna GmbH

in relation to safe guard clause

Answer 9

• Relates to interpretation of safe guard clause (RDA s.1B(6)(a)) -disclosures which “could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community”
• Case held:
  
  • the “circles” included traders, as well as creative designers, so disclosure only to traders is enough to anticipate
  • a disclosure may not count if it has been made available to only one undertaking in that sector or has been presented only in the showrooms of an undertaking outside the European Union, depending on the circumstances

Question 10

Case C-479/12, H. Gautzsch Großhandel GmbH & Co. KG v Münchener Boulevard Möbel Joseph Duna GmbH

in relation to copying requirement of Unregistered Community Designs

Answer 10

• Onus of proving copying rests with the holder, whereas the onus of proving independent creation rests with the opposing party
• However, if a Community design court finds that the fact of requiring that
  holder to prove that the contested use results from copying that design is likely
  to make it impossible or excessively difficult for such evidence to be produced,
  that court is required, in order to ensure observance of the principle of
  effectiveness, to use all procedures available to it under national law to counter
  that difficulty, including, where appropriate, rules of national law which provide
  for the burden of proof to be adjusted or lightened.
• Summarising above:
  
  • If proving copying likely to be excessively difficult or impossible then all procedures available under national law are required to be used to counter that difficulty (including rules adjusting/lighterning burden of proof)

Question 11

Magmatic Ltd v PMS International Group Plc [2014] EWCA Civ 181

Answer 11

• Scope of protection must be discerned from graphical representation and the information conveys
• Additional information, e.g. indication of product/purpose and description, may be included but this does not affect scope of design
• Decision:
  
  • representation of design was not simple line drawing but computer generated 3D monochrome image showing effect of light upon its surfaces
  • use of monochrome meant design was not limited to particular colours
  • But use of contrast in design registration was significant, and scope of design was limited to designs having this contrast
  • On this basis (and other differences in overall impression), PMS’ Kiddee case found not to be an infringement of Magamatic’s Trunki Registered Design

Question 12

PMS International Group Plc v Magmatic Ltd [2016] UKSC 12

Answer 12

• Interpretation of Community Design
  
  • Each community registered design must be interpreted in its own context
  • Images on a Community Registered Design should be interpreted by reference to how it would appear to a reader in the light of the terms of the principle regulation, the implementation regulation and the practice of OHIM
• Clarification of rights of Appeal Court to interfere with trial courts judgment (see Designers Guild/Lucasfilm) - Appeal Court can reconsider issue where trial judge had gone materially wrong in their approach
• Upheld EWCA decision

Question 13

Magmatic Ltd v PMS International [2013] EWHC 1925 (Arnold J)

Answer 13

• UKUDR in ‘Configuration’:
  
  • Configuration affirmed to refer to relative arrangement of parts or elements of an article
  • Design capable of consisting of multiple aspects of configuration (questionable how relevant is this post-removal of “aspects of” in IPA 2014 but design could potentially have multiple “configurations”
  • Configuration is capable of description in relatively abstract manner but must be specific enough to avoid being “method or principle of construction”
• Obscure prior art:
  
  • Supports assertion (on basis of CJEU case law) that design corpus for purposes of determining scope of protection consists of designs with which informed user is likely to be familar so there may be designs that are prior art for Art. 5/6 but do not form part of design corpus when assessing overall impression (which determines scope of protection) created by other designs for purposes of Art. 10

Question 14

Gimex v. The Chill Bag Company Ltd., [2012] EWPCC 31

Answer 14

• A prior design cannot be excluded from consideration as prior art just because it was used for a different purpose from the one subject to the registration
• However, use to which product is put plays a part in characterisation of informed user as they are informed user of, and so have design awareness of, those kinds of products
• In instant case, the differing product classes between design and prior art made visual differences between them more significant to informed user than if they had both been in same class
• Case facts:
  
  • Ice bag for bottles was marketed by Gimex
  • Gimex sued Chill Bag Company for infringement on basis of registered design
  • Chill Bag company alleged lack of individual character of design on basis of earlier regular (non-ice) bag by Gimex
  • Judge upheld design as valid on basis that small differences would result in different overall impression on informed user of chill bags (in part because of differing product classes)
  • Chill bag company’s product found to infringe

Question 15

Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882 (Pat), [2013] ECDR 1

• in relation to*
• Informed User*

Answer 15

• Characterisation of informed user (from High Court and accepted by Court of Appeal)
• The informed user is:
  
  • user of the product in which is the design is intended to be incorporated, not a designer, technical expert, manufacturer or seller
  • particularly observant
  • has knowledge of design corpus and design feautres normally included in designs existing in the sector concerned
  • interested in products concerned and shows relatively high degree of attention when he uses them
  • conducts a direct comparison of the design in usse unless specific circumstance or device characteristics making it impractical or uncommon to do so
  • informed user neither:
    
    • merely perceives designs as a whole and does not analyse details, nor
    • observes in detail minimal differences which may exist

Question 16

Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882 (Pat), [2013] ECDR 1 (Upheld by Court of Appeal)

• in relation to*
• Overall Impression*

Answer 16

• From High Court:
  
  • Overall Impression is produced on informed user
  • As a practical matter, design must be broken into features and each considered in three respects:
    
    • if dictated solely by function, disregard
    • consider against design corpus
    • consider from point of view of design freedom
  • Initial impression can be overriden by weight given to each feature by informed user:
    
    • Apple & Samsung products both had same front screen but to informed user these do not stand out due to family resemblance between Apple’s design and other members of this family
      
      • Both Samsung & Apple product belong to same pre-existing family
    • This would draw informed user’s attention to differences at back and side

Question 17

Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1339, [2013] FSR 9

(Non-remedies points)

Answer 17

• Applied precedent from Designer’s Guild (copyright) affirmed in relation to designs in [Procter & Gamble v Reckkit Benckiser] that “appelate court should not reverse a judge’s decision unless he has erred in principle” to Registered Designs
• Court of Appeal judge also stated that they would have agreed with High Court decision even if they were assessing the facts themselves
• Public policy point made - if scope of design was as wide as Apple contended then it would foreclose much of the mark for tablet computers and legitimate competition by different designs would be stifled

Question 18

Karen Millen Fashions Ltd v Dunnes Stores Case C-345/13 (CJEU)

Answer 18

1. Art. 6 of Community Design Regulation (individual character), overall impression on informed user must be different from that produced by one or more earlier designs, taken individually i.e. does not have to be different from combination of features taken in isolation and drawn from a number of designers, such combinations impermissible
2. Art 85(2) of Community Designs Regulation (presumption of validity of unregistered designs) should be interpreted as meaning that right holder did not have to prove design had individual character but only needed to indicate what in their view are element(s) giving it individual character, defendant needs to contest validity of design

Question 19

PepsiCo Inc v GrupoPromer Mon-Graphic SA (CJEU)

(Metal Rappers Case)

Answer 19

• Informed user does not refer to user of average attention but to a particularly observant one, either because of their personal experience or extensive knowledge of the sector in question:
  
  • on basis of the above court found ‘informed user of metal rappers’ could be either child of age 5 to 10 (personal experience) or a marketing manager (extensive knowledge)
• Informed user will make a direct comparison between the designs at issue (unless impracticable or uncommon in the sector concerned)

Question 20

Grupo Promer Mon Graphic SA v Office for Harmonisation in the Internal Market with Pepsico as Intervener (T-9/07)

(Pepsico Metal Rappers General Court decision)

Answer 20

• Design could not be declared on basis of bad faith (as Art. 25(1) exhaustively lists grounds on which a community design could be declared invalid)
• Degree of freedom is esablished by constraints imposed by:
  
  • technical function
  • statutory requirements
  • safety
  • cost
• Assessment of overall impression on informed user:
  
  • informed user will disregard elements that are banal and common to all types of product in issue and focus on features that are arbitrary and different from the norm
  • e.g. cars cannot be considered to produce the same overall impression just because they both have four wheels, headlamps, etc. (citing BOA, obiter)
• infringement and invalidity test over prior designs are the same - “a Community design is in conflict with a prior design when, taking into consideration the freedom of the designer in developing the Community design, that design does not produce on the informed user a different overall impression from that produced by the prior design relied on” (upheld in CJEU)

Question 21

Green Lane Products Ltd v. PMS International Group Ltd & Ors EWCA

Answer 21

• Prior art for attacking novelty of community registered design extended to all kinds of goods
• Only subject to limited exception that the prior art was obscure even in the sector it came from
• The sector included the sector of the alleged prior art
• Scope of infringement not limited to particular product class so it logically followed that prior art from any product class could be used
• Indication of product class was merely administrative did not affect substantive rights
• Intention of ‘obscure prior art’ exception (Art. 7) was to avoid remote antecedents being used which the European industry could not have known about, it was not to disclude prior art that was only ‘obscure in the field concerned’
• Facts:
  
  • PMS had been selling balls as massage balls
  • Green lane registered for similar design in relation to laundry balls (which PMS had not been doing)
  • PMS began marketing their balls as laundry balls
  • Green Lane sued for infringement
  • PMS claimed Green Lane’s design was invalid on basis of their massage balls
  • Green Lane claimed massage balls were obsure to people in sector of laundry balls
  • Court ruled that sector concerned included that of prior art

Question 22

Proctor & Gamble v. Reckitt Benckiser (CA)

Answer 22

• The informed user:
  
  • is aware of existing design corpus (but does not have ‘archival mind’ of skilled person in Patents)
  • has experience of other similar articles so is reasonably discriminatory
  • is alert to design issues
  • has more extensive knowledge and is more discriminating than average consumer of trade marks
  • is less liable to imperfect recollection than average consumer of trade marks
• Imperfect recollection may play small role but much less so than in TMs
• Design freedom is an objective test determined by external constraints which would apply to all designers but not internal commercial constraints specific to particular designer (e.g. need to use existing tooling)
• The designs do not have to have clearly different overall impression just different overall impression
• Test for designs is not a what would stick in the mind test but a what would impress now test

Question 23

Whitby Specialist Vehicles v Yorkshire Specialist Vehicles [2014] EWHC 4242 (Pat)

• in relation to*
• Registered Designs*

Answer 23

• The informed user neither:
  
  • merely perceives the design as a whole and not analyse details; nor
  • observe in detail minimal differences that exist
• There is a different overall impression if differences with closest prior design would be noticed by the informed user

Question 24

Whitby Specialist Vehicles v Yorkshire Specialist Vehicles [2014] EWHC 4242 (Pat)

in relation to

UKUDR

Answer 24

• Assumed, without deciding, that European standard of originality for copyright applies to UKUDR which judge said was “requiring creativity on the part of the designer”

Question 25

Easy Sanitary Solutions v Group Nivelles EU:C:2017:720, [2017] EUECJ C-361/15 (CJEU)

Answer 25

* Indication of product does not limit design for purposes of validity and infringement: * so to be valid the design has to differ from any design not just designs of same product * Indication of product can affect informed user however (and hence whether distinctive character) * not neccessary **for informed user** of the product in which the contested design was incorporated or to which it was applied knew an earlier design which produced same overall impression * cannot use imagination to "mosaic" with hypothetical combinations (even in same catalogue), but if combination was actual product offered then design exists * Additional * up to applicant not EUIPO to give grounds for invalidity * case related to designs for shower drains

Question 26

Amp Inc v. Utilux Pty Ltd (UKHL, 1971)

Answer 26

Relates to exclusion in relation to technical function: Decision: * if the shape was not there to appeal to the eye but solely to make the article work then it was excluded from statutory protection * dictated by technical function meant attributable to or caused or prompted by them, regardless of whether they could also be achieved in other ways **This was a case of pre-harmonisation UK law and statute had slightly different wording so current relevance unknown.**

Question 27

Audi/Porsche v Acacia (CJEU)

Answer 27

* Summary: * repair exclusion extends to any component part used for repair of complex product to restore its original appearance, and not limited to parts 'whose shape was determined by the appearance of the complex product as a whole' * exclusion only applied where replacement parts replaced visible original parts and were required to restore original appearance of complex product so only applied to replacement parts visually identical to the originals * manufacturer cannot guarantee parts used for prepare but should: * clearly and visibly inform user that product incorporated design of which they were not the owner and was only intended for repair of product to original appearance * should ensure through appropriate means, e.g. contracts, that downstream users did not intend to use them in ways contrary to exclusion * refrain from selling part where they knew or ought reasonably to have known that the part would not be used in accordance with exclusion * Quote: * while the shape of wheel rims was not determined by the appearance of the car, the exclusion of protection as a Community design in article 110(1) of Regulation No 6/2002 extended to any component part used for the repair of the complex product so as to restore its original appearance, and was not limited to fixed-shape parts, namely those parts whose shape was determined by the appearance of the complex product as a whole * the “repair” clause in article 110(1) applied only where the replacement parts replaced visible original parts and were required to restore the complex product to its original appearance, and therefore only to replacement parts that were visually identical to the original parts incorporated into the complex product when it was placed on the market * that while the manufacturer or seller of a component part of a complex product could not be expected to guarantee, objectively and in all circumstances, that the parts they made or sold for use in accordance with the conditions prescribed by article 110(1) of Regulation No 6/2002 were, ultimately, used by end users in compliance with those conditions, in order to rely on the repair clause the manufacturer or seller was under a duty to ensure that downstream users complied with the requirement in that clause that the downstream user of the component part use it only to repair a complex product so as to restore its original appearance; and that that duty required the manufacturer or seller (i) clearly and visibly to inform the downstream user that the component part incorporated a design of which they were not the holder and that it was intended to be used exclusively for the purpose of the repair of the complex product so as to restore its original appearance, (ii) to ensure through appropriate means, in particular contractual means, that downstream users did not intend to use the component parts in a way not compliant with the conditions of article 110(1) , and (iii) to refrain from selling a component part where they knew or reasonably ought to have known that the part would not be used in accordance with the conditions of article 110(1)

Question 28

Ford v Wheeltrims (CJEU)

Answer 28

* Repair exclusion (Art. 110) (restoring original appearance of a complex product) gave **no positive right to use** trade marks to restore original appearance, it was only an exclusion from design protection

Question 29

L'Oreal SA v RN Ventures Ltd (EWHC)

Answer 29

If the differences between a registered design and the pre-existing design corpus were small, then small differences might avoid infringement; however, if the differences were great, then the scope of the protection was likely to be wider, and small differences might not avoid infringement. The same logic applied to design freedom. The greater the designer's freedom, the wider the scope of the monopoly; conversely, the more limitations on design freedom, the narrower the scope of the monopoly

Question 30

Doceram v CeramTec Case C-395/16

Answer 30

* Summary * technical function exclusion still applies even if there alternative designs achieving function existed * court had to establish whether technical function was the only factor which had determined those features and that other considerations, particuarly visual ones, had not * court must carry out objective assessment, taking into account specific circumstances, including whether there were any alternative designs that could achieve the same function * the court did not have to do this from the point of view of an 'objective observer' * policy point: if existence of alternatives was enough then proprietor could register multiple different forms to obtain patent-like protection * Quotes: * even if there existed alternative designs which fulfilled the same technical function as that of the product concerned, the exclusion in article 8 of Council Regulation (EC) No 6/2002 could still apply; that the assessment of whether the features of appearance of a product were solely dictated by its technical function required the court to establish whether the technical function was the only factor which had determined those features, and other considerations, in particular those relating to visual aspect, had played no role in the designer's choice of those features; that the court was required to carry out an objective assessment, taking into account the specific circumstances of the case, including whether there were any alternative designs that could achieve the same technical function; and that it was not necessary to carry out that assessment from the point of view of the objective observer * if the existence of alternative designs fulfilling the same function as that of the product concerned was sufficient in itself to exclude the application of article 8(1) of Regulation No 6/2002 , a single economic operator would be able to obtain several registrations as a Community design of different possible forms of a product incorporating features of appearance of that product which are exclusively dictated by its technical function. That would enable such an operator to benefit, with regard to such a product, from exclusive protection which is, in practice, equivalent to that offered by a patent, but without being subject to the conditions applicable for obtaining the latter, which would prevent competitors offering a product incorporating certain functional features or limit the possible technical solutions, thereby depriving article 8(1) of its full effectiveness.

Question 31

Abraham Moon & Sons Ltd v Thornber (EWPCC, 2012)

Answer 31

* Background * A "ticket stamp" is a pattern for setting up a loom to create a particular pattern as a set of words/numbers * Moon alleged copyright infringement by Thornber * Thornber contended that there was no work in which copyright could subsist * Moon contended copyright existed in their ticket stamp - a pattern for setting up a loom to create a particular pattern as a set of words/numbers * Decision: * Key information on Thornber's ticket stamp infringed Moon's ticket stamp as it reproduced significant part of it as a literary work via indirect copying (and was an 'adaptation' of the literary work) * Moon's ticket stamp also amounted to **an artistic work** as while it would just appear as a series of words/numbers to the layman, an experienced fabric designer would be able to visualise the design from the ticket stamp so the ticket was not only a record of the instructions, it was also a record of the artistic work * This artistic work had been reproduced by Thornber's tartan and the copyright infringed * s51 defence not applicable because it was surface decoration, it did not matter that the colour ran through the fabric (as established by previous case law) * Ticket stamp acted as "fixation" of work * Did not resolve point as to whether fabric itself was graphic work as ticket stamp infringed anyway (but case law/judge's opinion seemed to be leaning that way) * Other factors (but not of particular legal significance): * Similarities allowed copying to be inferred and so defendant had to prove independent creation (which they could not do)

Question 32

Lucasfilm v Ainsworth [2008] **EWHC** 1878 (Ch)

Answer 32

* Ruled on whether Stormtrooper helmets/armour were artifacts of sculpture or artistic craftsmanship (as if they were then they would be protectable by copyright) * Significant in relation to artistic craftsmanship as this wasn't discussed further on appeal * To be a work of artistic craftsmanship: * it must be a work of craftsmanship - the stormtrooper helmets were considered to be craftsmanship and Mr Ainsworth was a craftsman due to high quality and skill involved * it must also be artistic which: * has to be part of its purpose; or: * must have become parts of its purpose when it was put into operation * On above criteria, stormtrooper helmets were deemed not to be such works as purpose was not to appeal to the aesthetic at all but to give particular impression in film, and unlike works of artistic craftsmanship, they were not designed to withstand close scrutiny

Question 33

Lucasfilm v Ainsworth (Supreme Court)

Answer 33

* Approved High Court approach (upheld by court of appeal) to considering whether something was a sculpture, which was: * giving regard to **normal use** of the word "sculpture" * but can still be applicable to things beyond what one would usually consider art (as in being displayed in galleries) * but inappropriate to stray too far from what would be though of as a sculpture * no judgement as to artistic worth * not every 3D representation of a concept can be a sculpture (otherwise every 3D construction would be) * sculpture **should have, as part of its purpose, a visual appeal in the sense that it might be enjoyed for that purpose alone, whether or not it might have another purpose as well** and this purpose is that of **the creator** * other uses do not disclude it from being a sculpture but has to have intrinsic quality of being intended to be enjoyed as a visual thing * "Pile of Bricks" at *Tate Modern* is capable of being a sculpture because of its artistic purpose * process of fabrication (i.e. handmade) is relevant but not determinative * Appelate courts should be slow to interfere with judgment of trial judge in IP cases (from Designers Guild)

Question 34

Lambretta Clothing Company Ltd. v Teddy Smith (UK) Ltd. and Next Retail Plc (EWCA)

Answer 34

* Background: * company claimed infringement of UKUDR/copyright infringement for different colouring of old design * S51 has created gaps between copyright and design protection * UKUDR did not subsist * Colouring of an article or parts of an article could not be covered by UKUDR as it did not amount to shape or configuration of an article * Regardless, it would have been excluded from UKUDR as surface decoration (despite the fact that the colour ran thorough the article) * UKUDR could not subsist in this colouring * Copyright excluded under s51: * colouring was not applied in abstract but to the design in question and appelant's general drawing of shirt was a design document * if artistic copyright existed it would be in relation to whole drawing which was excluded under s51 * policy point: judge said it would have led to odd conclusion that colouring attracted longer protection than a new design itself * Mance LJ dissented saying copyright did exist in colour ways as surface decoration and s51 did not provide exclusion

Question 35

George Hensher v. Restawhile Upholstery (Lancs) Ltd (House of Lords)

Answer 35

* Case related to whether new design of sofa was protected * Before s51 so if there had been a design drawing then there would have been protection under indirect copying, but none existed * So tried to claim copyright subsisted as work of artistic craftsmanship * When considering whether a work is one of artistic craftsmanship, the court should not make an aesthetic judgment but should view the matter generally * though questionable whether such an approach was really taken as some of the judges referred to opinions of expert witnesses finding it distinctive but ugly as a reason for it not to be * One judge - purpose of author may provide pointer but must be viewed in detached and objective way * Lord Kilbrandon - emphasised purpose of 'author': * in this case it was not artistic as this hadn't been the goal, the goal had been to create a commercially successful chair and not a work of art

Question 36

Flashing Badge Co Ltd v Groves (t/a Flashing Badges by Virgo and Virgo Distribution) EWHC

Answer 36

* Where the design of the shape of a badge followed the outline of the design for the artistic work on the fact of the badge, the latter design as a graphic design which could exist apart from the shape of badge and this enjoyed copyright protection for the infringement which CDPA s.51 afforded no defence against * Like separability analysis applied in the US - if the graphic design could be separated from the object then copyright subsists * Drawings incorporated: * (a) a design for an artistic work; and (b) 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 * s. 51 applied to latter but not former

Question 37

Flos spa v Semerano Casa e famiglia spa c-168/09 (ECJ)

Answer 37

* Protection by design right did not preclude protection by copyright - both could and should be conferred if appropriate criteria in member state for copyright protection met * Art. 17 of 1998 designs directive precluded national legislation from excluding copyright protection from designs which met the requirements to be eligible for protection but which had entered the public domain before the legislation's entry into force * Transitional period was appropriate as regards companies who used these designs but general exception to copyright protection of these designs was not * Art. 10(2) of term directive was interpreted as meaning that terms of protection shall apply to all works and subject matter so copyright conferred on designs should be of same length * Led to repeal of s.52 which had limited copyright term of industrially maufactured artistic works of which more than 50 had been manufactured to a period of 25 years from the end of the calendar year in which the articles were marketed * Means significantly longer term of protection may be available via copyright than through design protection * Decision criticised by Bently and may not needed to be have done as art. 17 of designs directive arguably allowed member states to determine duration of copyright protection for designs