Copyright Protection of Designs
Treating copies of finished products as infringements of the copyright in the design or engineering drawings for those products even though the copyist hardly ever saw those drawings was a very convenient way of protecting utilitarian as well as ornamental designs. It was well understood and non-discriminatory in that it covered most countries' designs. Since just about every country on the planet was party to the Berne or Universal Copyright Convention or some other treaty with HM Government for the protection of British copyright works, almost everybody was a "qualified person" for the purpose of the Act. This was the way in which designs were protected not just in the United Kingdom but also in many other common law jurisdictions including Australia, Canada, New Zealand and the Republic of Ireland.
All of this came to an end exactly 22 years ago to this day when the Copyright Designs and Patents Act 1988 ("CDPA") came into force (see art 2 of the The Copyright, Designs and Patents Act 1988 (Commencement No. 1) Order 1989, SI 1989 No 816). S.51 (1) of that Act provided that it would no longer be an infringement of copyright in a design document to make an article to the design or to copy an article made to the design. In place of artistic copyright a new intellectual property right called "design right" came into being. Instead of a term of life plus 50 years a term of 10 years was substituted by s.216 (1) (b) of the CDPA. For the last 5 years of that term anyone in the world including an infringer could apply to the Comptroller for a licence of right under s.237 (1). Anyone who did so was immune from injunctions and orders for delivery up and the maximum amount of damages that could be awarded against the infringer was twice the licence fee for a licence of right (see s.239 (1)). Since design right is an almost exclusively British concept hardly any design outside the European Economic Area qualifies for protection under the CDPA. I remember explaining these impending changes as the Copyright, Designs and Patents Bill was passing through the Commons to a pioneering businessman from St. Helens who had been one of the first to design and manufacture his products in China. His whole business model had been based on the assumption that design drawings made by his Chinese and Lancashire designers would continue to be protected by copyright. To say that he was not happy would be something of an understatement.
Designing Round Design Right
Because of the limitations of design right protection exposed in yet another way by Judge Birss QC's recent decision in Albert Packaging v Nampak which I discussed in my IP Yorkshire blog on 2 July 2011, businesses have been looking for ways of restoring copyright protection by the back door. Electronic components manufacturers tried to argue that net lists could be protected as literary works (see Mackie Designs Inc v. Behringer Specialised studio equipment (UK) Ltd, Ulrich Bernhard Behringer & Behringer Spezielle Studiotechnik GmbH  EWHC Ch 252 (22 Feb 1999). This appeal to the UK Supreme Court, the very first IP case before that tribunal, was another way. Lucasfilm argued that the model of a stormtrooper's helmet was a sculpture within the meaning of s.4 (1) (a) of the CDPA and hence protected for life plus 70 years.
The Issues before the Supreme Court
The basic facts of that case and the issues are set out fully in my case note on the decision of the Court of Appeal that I wrote 12 Jan 2010. In the appeal to the Supreme Court the issues had been whittled down to two:
(1) whether the model of a helmet was a sculpture and thus an artistic work in which copyright could subsist pursuant to s.1 (1) (a); and
(2) whether an English court could entertain an action for infringement of an American copyright.
Had their lordships found that the helmet was a sculpture the Supreme Court would have had to decide whether the exceptions under s.51 or s.52 applied.
Was the Helmet a Sculpture?
The Supreme Court held that it was not. Their lordships upheld the judgments in the courts below but with two qualifications.
First, at the risk of appearing humourless they were not enthusiastic about the "elephant test" (that is to say, knowing one when you see one) which quoted in full in my previous case note. The reason for their lack of enthusiasm is explained in paragraph :
"Any zoologist has no difficulty in recognising an elephant on sight, and most could no doubt also give a clear and accurate description of its essential identifying features. By contrast a judge, even one very experienced in intellectual property matters, does not have some special power of divination which leads instantly to an infallible conclusion, and no judge would claim to have such a power. The judge reads and hears the evidence (often including expert evidence), reads and listens to the advocates’ submissions, and takes what the Court of Appeal rightly called a multi-factorial approach. Moreover the judge has to give reasons to explain his or her conclusions."
Very true but try telling that to a district judge. Especially one who has to deal with litigants in person on both sides. They could not get through their work unless they assumed the very power of divination that Lord Walker and the other Supreme Court justices disclaimed. Also, isn't that what "judicial knowledge" is supposed to be about?
The other point on which their lordships differed from the Court of Appeal was on the legislative policy on the protection of 3-dimensional objects. Lord Walker said at paragraph :
"It is a general point as to the policy considerations underlying Parliament’s development of the law in order to protect the designers and makers of three-dimensional artefacts from unfair competition. After reviewing the legislative history the Court of Appeal took the view (para ) that there was no assistance to be obtained from the relationship between copyright and registered design right. We respectfully disagree, especially if the relatively new unregistered design right is also taken into account. It is possible to recognise an emerging legislative purpose (though the process has been slow and laborious) of protecting three-dimensional objects in a graduated way, quite unlike the protection afforded by the indiscriminate protection of literary copyright. Different periods of protection are accorded to different classes of work. Artistic works of art (sculpture and works of artistic craftsmanship) have the fullest protection; then come works with “eye appeal” (AMP Inc v Utilux Pty Ltd  FSR 572); and under Part III of the 1988 Act a modest level of protection has been extended to purely functional objects (the exhaust system of a motor car being the familiar example). Although the periods of protection accorded to the less privileged types have been progressively extended, copyright protection has always been much more generous. There are good policy reasons for the differences in the periods of protection, and the Court should not, in our view, encourage the boundaries of full copyright protection to creep outwards."
Now this is a very important point and possibly even more important than the judges had contemplated. The reason why it is important is that technologies are developing under the general label of 3-dimensional printing which will enable just about any artifact to be constructed on the spot more or less anywhere that it is needed. By coincidence I listened to yesterday's "In Business" on BBC Radio 4 where these technologies were described as nothing less than a second industrial revolution. Once those technologies mature there will no longer be any advantage in manufacturing in low wage economies. There will be no need to build up stocks or transport masses of quantities of finished goods by sea and road. But there will also be lots of intellectual property issues too.
How will the designs for these artifacts be protected? The law as it subsisted before 1989 offered simple answers. Now thanks to five different design regimes:
- unregistered design right
- design registration
- registered Community design
- unregistered Community design, and
- artistic copyright for designs not protected by design right
Can an English Court entertain an Action for US Copyright Infringement?
The justices said "yes." The Court of Appeal had come to the opposite conclusion in reliance on the House of Lords' decision in British South Africa Co v Companhia de Moçambique  AC 602 (see my case note). The Supreme Court took the view at paragraph  that much of the underpinning of the Moçambique rule and the decision of the High Court of Australia in Potter v Broken Hill Pty Ltd.  HCA 88, (1906) 3 CLR 479 (20 March 1906) which had extended it to intellectual property had been eroded. "All that is left of the Moçambique rule", said Lord Walker, "(except to the extent that it is modified by the Brussels I Regulation) is that there is no jurisdiction in proceedings for infringement of rights in foreign land where the proceedings are 'principally concerned with a question of the title, or the right to possession, of that property.'” They came to the "to the firm conclusion that, in the case of a claim for infringement of copyright of the present kind, the claim is one over which the English court has jurisdiction, provided that there is a basis for in personam jurisdiction over the defendant."
Although this latter point took up the greater part of their judgment, the Supreme Court justices stated more than once "a very narrow one because the appellants do not take issue with the application of the Moçambique rule to intellectual property so far as it is limited to patents and other intellectual property rights dependent on the grant or authority of a foreign State, and to cases where what is in issue is the validity of the patent, as opposed to its infringement."
This is an important case and one that is likely to be cited many times in future. Indeed, I have already mentioned it in one opinion and taken it into account in a pleading. Our friends in the rest of the common law world are also likely to refer to this decision both for "sculpture" point but also the justiciability issue because it had distinguished a decision of the Australian High Court that had stood unchallenged for over 100 years. Should anyone wish to discuss any point that arises from the decision he or she should call me on 0800 862 0055 or use my contact form.