This case involved an appeal by Lambretta (L) against a decision dismissing a claim for infringement against the defendants Teddy Smith (T) and Next (N) regarding L’s unregistered design right (UDR) and artistic copyright in relation to the design for a “retro-vintage” track suit top.
The main design drawing
The shape of L’s top was not original. The contribution of L’s designer included features such as choice of the colourways (blue for the body, red for the arms, white for the zip and stripes on the sleeves) and the sizing and positioning of L’s logo on the front and back. The first instance judge had held that as a matter of law, UDR could not subsist in the design and that there was a defence under s.51 of the Copyright, Designs and Patents Act 1988 (the Act). L appealed on the judge’s findings of law in relation to the claim against T. The judge had found on the facts that T had copied the track top but that N had not, consequently, N was not party to the appeal.
The Court of Appeal dismissed L’s appeal. Jacob LJ gave the main judgment with Mance LJ dissenting in respect of the s.51 issue.
Shape or configuration of an article - The Court of Appeal agreed, taking into consideration the decision of Pumfrey J in Mackie Designs Inc v Behringer Specialised Studio Equipment (UK) Ltd & ors  RPC 717, that mere choice of colourways of a standard track top was not an “aspect of the shape or configuration (whether internal or external) of the whole or part of an article” within s213(2) of the Act. Jacob LJ concluded referring to the case law of registered designs “that for over a century no one has ever held that merely colouring an article in a novel way amounted to “shape or configuration””.
Surface Decoration - Jacob LJ went on to find that even if colourways were an aspect of the “shape or configuration”, the exclusion of “surface decoration” from the scope of UDR would exclude protection in this case. He accepted that parts of the garment were dyed right through but he took the view that “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 cases where the decoration, like that in Brighton rock, runs through the article”. Accordingly the judge had been right to conclude that UDR could not subsist in the design of L’s track top.
S.51 Defence - Jacob LJ rejected the argument by L that if UDR did not subsist in its track top then it must be able to enforce artistic copyright. L’s argument was that otherwise there would be a gap between copyright and design right which were intended to be mutually exclusive. Jacob LJ however, agreed with the judge that copyright in L’s track top could not be enforced because of s.51 of the Act which effectively prevented the copyright claim.
Commonplace in the design field in question - In considering this question the judge had erred in principle in narrowing down the “design field” for the purposes of s213(4) of the Act to “clothes to be designed and marketed for sale to young men as casual wear, as distinct from sportswear”. Jacob LJ said that a “reasonably broad approach is called for” and that what mattered was “the sort of designs with which a notional designer of the article concerned would be familiar”. In this case a tracksuit designer intending to give a “sporty” image would look at “well-known actual sportswear, whether strictly so called or not”. Jacob LJ cited Scholes Windows v Magnet  FSR 172 which he thought agreed with his view. When applying this to the facts, Jacob LJ concluded that the choice of colourways was indeed commonplace in the field of leisurewear design
Did T copy? – Jacob LJ concluded that the judge’s overall conclusion that T copied L could not be sustained on the facts as known. That was not to say that copying was disproved but that, if L otherwise had a legal right, justice could only be served by a retrial on the relevant issues.
European UDR – Jacob LJ pointed out that although the new Community UDR lasts for a shorter period that the UK UDR, it would clearly cover this case (had the regulation been in force when the relevant events occurred) because of the wider definition of “design” contained in Art. 3(a) of Regulation 6/2002. For example, the new Community UDR does not exclude surface decoration and specifically includes features such as colours. He further stated that it was open to question whether the UK still needs it own UDR on top of that provided by Regulation 6/2002.