The defendants appealed a finding that they had infringed the claimant’s unregistered design rights in collapsible umbrellas. The defendants said the law protected only the design as a whole, and that only part had been copied.
Held: Authority was clear that subject to considerations as to the non-protection of ‘must fit/must match elements’ of a design and as to minima, the right could be infringed by copy of part of a design. Totes had copied an aspect of the design indeed nearly all of it. ‘ . . . a designer is entitled to prevent the copying exactly or substantially of part only of his design, unless that part is excluded from protection because it is not original (i.e. is copied or is commonplace) or falls within the must fit/must match exceptions or any combination of these. ‘ The appeal failed.
Judges:
Lord Justice Kennedy Lord Phillips Of Worth Matravers, Mr Lord Justice Jacob
Citations:
[2003] EWCA Civ 1514, Times 19-Nov-2003
Links:
Statutes:
Copyright Designs and Patents Act 1988 213(6)
Jurisdiction:
England and Wales
Citing:
Cited – Designers Guild Ltd v Russell Williams (Textiles) Ltd (Trading As Washington DC) HL 28-Nov-2000
Copyright Claim: Was it Copied, and How Much?
The claimant sought to enforce its copyright in artwork for a fabric design Ixia, saying the defendant’s design Marguerite infringed that copyright. Two issues faced the House. Just what had been copied and if any, then did this amount amount to the . .
Cited – Ocular Sciences Ltd v Aspect Vision Care Ltd ChD 11-Nov-1996
The freedom for a claimant in registered design right to frame his claim, as to whether he asserts an infringement of the entire design, or limits it to the section infringed, is important.
Laddie J said: ‘This means that the proprietor can . .
Cited – Volumatic Ltd v Myriad Technologies Ltd ChD 10-Apr-1995
The court considered whether the protection given by the section extended to part only of a registered design: ‘The question is whether, when these features [must fit and must match] have been subtracted, there is anything left in which unregistered . .
Cited – A Fulton Co Ltd v Grant Barnett and Co Ltd ChD 2001
The court considered an allegation that part of an unregistered design had been copied. The defendant said that the section required a claim in respect of the entire design.
Held: The part in respect of which a claim must be made must neither . .
Cited – Mark Wilkinson Furniture Ltd v Woodcraft Designs (Radcliffe) Ltd ChD 13-Oct-1997
Design right is limited to shape excluding any surface decoration. There is no infringement of design right by copying only the surface decoration. ‘The design in which the plaintiff primarily claims design right is now pleaded as ‘the whole . .
Cited – Ultraframe UK Limited v Clayton, Fielding and Others ChD 3-Oct-2002
The claimants asserted infringement of their registered design rights in parts used in their double glazing and conservatory units. ‘Therefore it is possible for design right to subsist in the design of the part of the article which is not excluded . .
Cited – Mackie Designs Inc v Behringer Specialised Studio Equipment (Uk) Limited, Ulrich Bernhard Behringer and Behringer Spezielle Studiotechnik Gmbh ChD 22-Feb-1999
Unregistered design right extends beyond the visually appreciable to other aspects of the design of an article, in this case to semiconductor chips and electronic circuits. . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 06 August 2022; Ref: scu.187467