Copyright can protect design drawings

In the recent case of The Flashing Badge Company Limited v Brian Groves the High Court was asked to consider whether copyright was infringed by the copying of badge designs. Acknowledging that designs are artistic works in which copyright subsists the defendant sought to rely for his defence on section 51 of the Copyright, Designs and Patent Act 1988 (CDPA) which provides that “it is not an infringement of any copyright in a design document or model recording or embodying a design 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”. This provision ensures that protection of designs is normally considered by reference to the applicability of design rights in the article itself. However, in this instance the court held that section 51 of the CDPA did not provide a defence and that the marketing of badges made according to the claimant’s design was an infringement of copyright. In so doing the court distinguished the decision in Lambretta Clothing Company Ltd v Teddy Smith (UK) Ltd and another [2004] EWCA Civ 886 which upheld the defence.

In The Flashing Badge Company Limited v Brian Groves the claimant owned the copyright in the designs for a number of badges. The badges bore familiar messages in a specifically designed form, for example, "Happy Birthday" (a message in banner form above five lit candles sitting on a decorated cake) and "21 TODAY" (a design set within the shape of a key). Each badge was designed in a style distinctive from the others, and had six LEDs of different colours placed on it, the colours and the positions of the LEDs being chosen so as to make sure that the LEDs gave an effective glow to each badge and that their colours did not clash with the colours of the badge designs. The outline shape of the badges followed, and was dictated by, the outline of the artistic design which formed the subject matter of the face of the badges. The defendant imported from China and offered for sale identical copies of the claimant's badges.

Lambretta Clothing Company Ltd v Teddy Smith (UK) Ltd involved consideration of whether the section 51 defence applied to the undisputed copying of a tracksuit top. In that case the Court of Appeal held that the defence did apply. The original drawing of the coloured track top was a design drawing in the sense that section 51 provided for, and the defendant’s track tops were articles made to the design. The fact that surface decoration is excluded from the definition of "design" for the purpose of section 51, according to the court, made no difference, because the colourways were not just colours in the abstract - rather, they were colours applied to shapes that could, neither physically nor conceptually, exist apart from the shapes of the parts of the article. It was not, as the court explicitly stated, as though this surface decoration could subsist on other substrates in the same way as, for instance, a picture or logo could.

In the Flashing badge decision Justice Rimer concluded: “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.”

The subtleties of interpretation between these two decisions highlights some of the complexities involved where alleged copying of designs occurs. Each instance involved careful scrutiny of wrongdoing and a careful analysis of the availability of particular causes of action and applicable defences. In this case the court highlighted the significance to the design of a decoration capable of transfer to a different surface and, in so doing, allowed copyright protection of that decoration.