Lambretta Clothing Company Ltd v Teddy Smith (UK) Ltd & Anor

For unregistered design right under the Copyright, Designs and Patents Act 1988, a selection and juxtaposition of colours on an existing garment is neither an aspect of its shape or configuration nor anything other than surface decoration. It therefore falls outside section 213 protection.

By a majority, a design drawing showing such colourways was also caught by section 51 when the claimed copyright infringement consisted of making or copying the article to the design. The statutory language, rather than any assumed need for seamless intellectual-property protection, governs. The relevant design field for commonplace is construed broadly by reference to designs familiar to a notional designer. Historic sportswear could therefore render a retro leisurewear colourway commonplace.

Lambretta designed and marketed a retro track-top with a blue body, red arms, white stripes and a white zip. It alleged that Teddy Smith copied the garment and sued for infringement of unregistered design right and artistic copyright. Next Retail was originally sued, but the finding that it had not copied was not appealed.

Etherton J held that unregistered design right could not subsist and that section 51 of the Copyright, Designs and Patents Act 1988 defeated the copyright claim. He found that Teddy Smith had copied: [2003] RPC 41. Lambretta appealed the legal rulings. Teddy Smith cross-appealed on commonplace and copying, including the fairness of the trial treatment of the “French rib” evidence.

1. Appeal dismissed. Jacob LJ held, with whom Sedley LJ agreed, that the relevant design for unregistered design right was only the choice of colourways. Colouring an existing track-top did not concern its shape or configuration within section 213(2) of the Copyright, Designs and Patents Act 1988. In any event, it was surface decoration within section 213(3)(c), even though the colour ran through the fabric rather than being applied as a superficial layer.

2. On section 51, Jacob LJ held that copyright could not be enforced in the whole design drawing by isolating the colourways from the shapes that bounded and juxtaposed them. Section 51 therefore barred the artistic-copyright claim. Sedley LJ agreed. Mance LJ dissented on this issue: in his view, section 51 excluded copying of shape or configuration only, leaving a possible claim for substantial copying of the drawing through its colourways and surface decoration. The majority rejected that construction.

3. The court also upheld the result on the alternative ground that the colourway was commonplace. The relevant design field was not confined to casual clothing rather than sportswear. It comprised designs familiar to a notional designer of a track-top intended to convey a sporty image. Retro sportswear remained current in designers’ minds. On that broader field, the red, blue and white colourway was commonplace.

4. The trial finding of copying could not safely stand because the French-rib point emerged without adequate notice and material interpretation errors affected the designer’s evidence. Fairness generally requires alleged similarities to be identified well before trial. If a subsisting and enforceable right had otherwise existed, the court would have ordered a retrial on copying. The issues of substantial reproduction and costs consequently did not affect the disposition.

• Court of Appeal (Civil Division) — dismissed Lambretta’s appeal. Jacob and Sedley LJJ held that section 51 of the Copyright, Designs and Patents Act 1988 barred the copyright claim; Mance LJ dissented on that issue.
• Chancery Division — Etherton J held that unregistered design right did not subsist and that section 51 supplied a copyright defence, while finding that Teddy Smith had copied: [2003] RPC 41.