Flashing Badge Company Ltd v Groves (t/a Flashing Badges By Virgo & Virgo Distribution)

Section 51 of the Copyright, Designs and Patents Act 1988 may protect copying of the shape or configuration of an article, but it does not protect copying of surface decoration that is itself an artistic work capable of independent existence. The court must separate the design of the article from the artistic work applied to it. Where graphic designs can be applied to other substrates, copying them remains actionable notwithstanding that the article follows their outline. The defence may nevertheless apply to a design element forming only the article’s non-artistic shape or configuration. The Court of Appeal’s decision in Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd was confined to its special facts, where the colourways were inseparable from the garment’s configuration.

The claimant sought summary judgment for infringement of copyright in designs for flashing novelty badges and their backing cards. The defendant admitted infringement of the backing-card designs and submitted to judgment on that part of the claim. The remaining issue was whether section 51 of the Copyright, Designs and Patents Act 1988 provided a defence to copying the graphic designs on the badges, whose outline shapes followed those designs and incorporated specified LED positions and colours. The central question was whether the relevant drawings were designs for an artistic work, or designs for badges as articles other than artistic works.

1. The claimant was entitled to summary judgment on the copyright claim concerning the badge designs, subject to the exception of the star design. The defendant had already submitted to judgment concerning the backing-card designs.

2. Each relevant drawing was a “design document” within section 51(3) of the Copyright, Designs and Patents Act 1988. Except for the star drawing, it contained two elements: a design for an artistic work and a design for a badge whose shape followed the artistic work.

3. Section 51 applies only to a design for the shape or configuration of the whole or part of an article, excluding surface decoration. It therefore protected, if at all, copying of the badge’s shape or configuration, but gave no defence to infringement of copyright in the graphic design forming its surface decoration.

4. The graphic designs were capable of being applied to other substrates and were not merely aspects of the badge’s configuration. They were therefore entitled to copyright protection. The star design was an exception because the defendant’s argument established that it contained no surface decoration of the relevant kind.

5. The court considered Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd [2005] RPC 88. The majority decision there turned on its special facts: the colourways were treated as part of the garment’s configuration. The present graphic designs were analogous to the picture or logo identified in that reasoning, rather than to the inseparable colourways in Lambretta.

6. Section 51 accordingly afforded the defendant no defence except in respect of the star design. Counsel were to be heard on the form of the order.