Protection for unregistered designs may be stronger than previously thought, following a ruling by the High Court that found the designs of novelty badges had been infringed.
About registered and unregistered design rights
Designs can enjoy up to 15 years of protection without the need for any formalities by the designer in the UK. This unregistered design right allows the owner of a design to stop anyone from copying the design without permission.
A separate, more powerful right exists to protect the appearance of a product for up to 25 years, obtained by registering the design at the UK Designs Registry, part of the UK Intellectual Property Office. Unlike an unregistered design right, the registered right is a monopoly right: even the innocent sale of an item can infringe the right if the item gives the same overall impression as the registered design.
Unregistered rights in the UK protect aspects of the shape or configuration of the whole or part of an article, but do not cover surface decoration. So two-dimensional designs, such as textile or wallpaper designs, are not protected, though such designs can qualify for registered design protection. Registered design rights can protect the whole or a part of a product, respecting product features such as lines, contours, colours, shape, texture and materials, whether in two-dimensions or three.
Pan-European rights also exist. Designs can be registered for pan-European protection but there is also an unregistered Community design right. Confusingly, this three-year right follows the criteria of the registered design right, not the criteria of the UK's unregistered right, so it can protect two-dimensional designs.
The case before the High Court was concerned only with the UK's unregistered design right and copyright.
The Flashing Badge Company commissioned a freelance artist to design 25 novelty badges, with slogans like "World's Best Dad", "Princess" and "Happy Birthday". The company paid the freelancer to assign the copyright in the designs to it and then began selling the badges to the public.
Each badge had six flashing LEDs, positioned to suit each design. A key feature of the design of each badge was that its outline shape followed, and was dictated by, the outline of the artistic design which formed the subject matter of the face of the badge.
Justice Rimer gave an example in his judgment: "[In] the case of the '16 TODAY' badge, the outline of the shape of the badge follows the distinctive outline of the graphic design of the '16 TODAY', the design also indicating the particular points at which the LEDs are to be placed and the colour of each. If the graphic design on the badge were removed, the same outline for the shape of the badge would remain."
An entrepreneur, Brian Groves, who traded under the names Flashing Badges by Virgo and Virgo Distribution, imported from China and sold virtually identical copies of the flashing badges. Groves disputed infringement of the badge designs, but accepted that designs are artistic works in which copyright subsists.
Groves based his defence on a provision of the Copyright, Designs and Patent Act of 1988, which states, at section 51, that "it is not an infringement of any copyright in a design document … 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."
A design document can be a drawing, a written description, a photograph or data stored in a computer. Section 51 covers the design of any aspect of the shape or configuration of the whole or part of an article, other than surface decoration.
Justice Rimer took the view that each drawing for the badges was a "design document". Each drawing, he reasoned, incorporated a design for an artistic work and 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. Section 51 allows copying of the latter element, but does not extend to surface decoration. So it provides no defence to infringing the copyright in the graphic design which provides the surface decoration of the badges.
Justice Rimer distinguished a recent case in which clothing firm Lambretta sued rival designer Teddy Smith over the design of a tracksuit top. In that case the Court of Appeal had ruled that the juxtaposition of colours did not enjoy an unregistered design right because they did not form part of the shape or configuration of the tracksuit top. Lord Justice Jacob said in that case that the colours were surface decoration.
After the Lambretta case, some feared that designers were less well protected by the UK's unregistered design right. The victory for the Flashing Badge Company this month lends support to the right.
Justice Rimer wrote: "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."
Alice Williams, an intellectual property lawyer with Pinsent Masons, the law firm behind OUT-LAW.COM, said: "The fact that there are so many ways to protect designs makes the whole subject very complicated. In both Lambretta and the Flashing Badge cases, though, the designers could have registered their creations and probably avoided a courtroom. That's the key message for any designer: it's a relatively cheap and straightforward process to register a design and it removes all the uncertainty."