The case concerned a tracksuit top designed for clothing firm Lambretta in 2000 by a Mr Robert Harmer. While tracksuit tops all have a similar shape, the colours and logos shown on them are different. Harmer's design had red arms with two white stripes, white zips, a blue body, and the company logo shown to front and back.
But when rival firms Teddy Smith and Next began selling similar tops, Lambretta sued, alleging that the companies had infringed either upon its unregistered design rights or upon its artistic copyright.
An unregistered design right attaches automatically to designs created after 1st August 1989, giving the owner the right to stop anyone in the UK from copying the design without authorisation.
The right only applies to designs that are substantially the same as that originally created, and it lasts for a maximum of only 15 years.
The case, first considered by the UK High Court in 2003, hinged on whether an unregistered design right could exist in the selection of colours for a top at all, or whether it was knocked out by these exceptions. The logo and stripes were irrelevant for the purposes of the case, as they were clearly "surface decoration," which is specifically excluded from the scope of the unregistered design right.
The High Court found that Next had not copied the design, but Teddy Smith had. Nevertheless the Court dismissed the action on the grounds that unregistered design right did not apply to a selection of colours, and that there was no artistic copyright infringement.
Lambretta appealed, but last week three judges of the Court of Appeal for England and Wales largely upheld the original ruling. One judge, Lord Justice Mance, dissented on the question of artistic copyright.
According to Lord Justice Jacob, giving the opinion of the court, the juxtaposition of colours could not attach a design right because they did not form part of the "shape or configuration" of the top. Moreover, he considered that the colours were actually surface decoration.
He said:
"It is true that the parts of the garment are dyed right through, but any realistic and practical construction of the words 'surface decoration' must cover both the case where a surface is covered with a thin layer and where the decoration, like that in Brighton rock, runs throughout the article. To hold otherwise would mean that whether or not [unregistered design right] could subsist in two different articles, having exactly the same outward appearance, depended on how deep the colours went."
Lord Justice Jacob then considered the question of artistic copyright, but found that Lambretta's claim was foiled by a defence contained in the Copyright, Designs and Patents Act 1988.
This states:
"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".
In his opinion, the drawing upon which the tracksuit top was based was a design document. The judge explained:
"colourways are not just colours in the abstract: they are colours applied to shapes. Neither physically nor conceptually can they exist apart from the shapes of the parts of the article. It is not as though this surface decoration could subsist on other substrates in the same way as, for instance, a picture or logo could."
In short the colours on the top were part of the top itself, and therefore the drawings upon which it was based – and to which copyright would attach - related to an article that was other than "an artistic work or typeface". The defence applied.
While this ruling would appear to leave a hole in protection for design right holders, Lord Justice Jacob went on to offer a solution. "The new European unregistered design right", he observed, "although lasting for a shorter period than the UK [unregistered design right], clearly would cover this case."
"This Regulation was not in force at the time when the events of this case occurred. But it demonstrates how, if one wanted to cover a case such as the present, it could be done. Whether the UK still needs its own unregistered design right on top of that provided by the Regulation is perhaps also open to question," he added.