Scholes Windows Limited v Magnet Limited

Whether a design is commonplace under Copyright, Designs and Patents Act 1988, section 213(4), is a mixed question of law and fact. The design field is determined by the ordinary meaning of the expression and by the need to set sensible limits to comparison. It is not confined by the material, purpose or application of the article where those matters are not part of the protected shape or configuration. Earlier designs may be considered if they can fairly and reasonably be regarded as within the design field at the time of creation. The court may use expert evidence, but the ultimate assessment is objective and belongs to the court. An appellate court should not interfere absent misdirection or error of principle.

Scholes designed a decorative horn forming part of a U-PVC mock sash window. Magnet marketed a similar window, and the deputy High Court judge found substantial copying. He nevertheless dismissed the infringement claim because the horn design was commonplace in the relevant design field when created and therefore lacked originality under section 213(4) of the Copyright, Designs and Patents Act 1988.

Scholes appealed, arguing that the design field should be limited to U-PVC or casement windows and should exclude historical timber sash-window designs. Magnet challenged the finding of copying by respondent’s notice. The central issues were the proper scope of the design field, the temporal relevance of earlier designs, and the appellate approach to the judge’s evaluation.

1. Appeal dismissed. The finding that the Nostalgia horn was commonplace was upheld. The respondent recovered 90% of the appeal costs. The application for further evidence was refused by agreement.
2. The issue under section 213(4) of the Copyright, Designs and Patents Act 1988 involves findings of fact, comparison of designs, overall evaluation and application of an imprecise legal standard. Applying the approach in Designers Guild Ltd v Russell Williams (Textiles) Ltd [2001] FSR 113, the Court of Appeal should not reconsider the issue afresh or interfere unless the judge misdirected himself or erred in principle.
3. The statutory expression “design field in question” is not defined. It must be given its ordinary meaning, with the outer limits of comparison determined as matters of fact and degree. The design field is not necessarily confined by the material from which the article is made or by its nature and purpose.
4. The protected right concerns the shape or configuration of the relevant article or part, not the article itself, a construction method, or the idea of applying a decorative feature to a particular type of window. The use of U-PVC and the mock-sash purpose were therefore irrelevant to defining the design field.
5. The statutory inquiry is whether the design was commonplace at the time of creation. Existing designs first produced earlier may be considered where they can fairly and reasonably be regarded as within the design field at that time. Their continued visibility to designers and the public was relevant, even though the designs had ceased to be used in new construction.
6. The deputy judge was entitled to compare the horn with numerous Victorian window horns and to conclude that its relevant features could readily be found in the design field. Comparisons were properly made from the perspective of those to whom the design was intended to appeal. Experts may assist with perception and appreciation, but the objective decision belongs to the court.
7. Since the design was unprotected, it was unnecessary to decide the respondent’s challenge to copying. The court nevertheless indicated that it would have been reluctant to interfere with the finding that Magnet’s horn substantially reproduced the Nostalgia design.

• Court of Appeal (Civil Division): appeal from the deputy High Court judge dismissed. The order on the infringement claim was upheld.
• High Court (Chancery Division): Mr Nicholas Underhill QC, sitting as deputy High Court judge, dismissed the action after finding ownership and substantial copying but holding that the design was commonplace under section 213(4).