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.