Most people know that design right is a relatively new intellectual property right which was created by Part III of the Copyright, Designs and Patents Act 1988 ("CDPA") which came into force on the 1 August 1989. The right protects original designs (that is to say, the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article. It is to be distinguished from artistic copyright that protects artistic works from reproduction under Part I of the CDPA and rights in new designs having individual character protected by registration under the Registered Designs Act 1949 as amended.
Legislative History In its 1986 white paper, “Intellectual Property and Innovation” (Cm 9712), the government of the day recognized that the protection of functional articles under the Copyright Act 1956 was highly controversial. It noted the objections that:
the term of protection, which was then 50 years plus the life of the author rather than the present 70, was far too long
the existence and the term of the protection were uncertain because the right was unregistered and duration depended on the life of the author
English law was at variance with international practice; and
penalties for infringement were too high with the possibility of conversion damages as well as additional statutory damages.
The government considered but rejected a registration system for functional as well as aesthetic designs and an unfair copying law. Instead, it decided to "provide protection on copyright principles but without the more objectionable features of full copyright protection" such as the very long term and the possibility of conversion damages. Mindful of such cases as George Hensher Ltd. v Restawile Upholstery (Lancs) Ltd.  AC 64 and Merlet v Mothercare Plc  RPC 115 where the claim failed because the design had not been created in a drawing, the government decided to protect original designs rather than the media in which they were first expressed. The white paper proposals were implemented by Part III of the CDPA.
Primary Infringement The section of the CDPA that defines primary infringement of design right parallels s.16 of the same statute which defines infringement of copyright. Just as s.16 (1) lists the acts that are restricted to the owner of a copyright, s. 226 (1) provides that
"the owner of a design right in a design has the exclusive right to reproduce the design for commercial purposes -
(a) by making articles to that design, or
(b) by making a design document recording the design for the purpose of enabling such articles to be made."
As copyright in a work is infringed by doing or authorizing any of the acts restricted by copyright (s.16 (2)), design right is infringed by doing or authorizing anything that is the exclusive right of the owner (s. 226 (3)). "Making articles to the design" is defined by s. 226 (2) as "copying the design so as to produce articles exactly to the design." The adverb "substantially" echoes s.16 (3) (a)which provides that references to the doing of an act restricted by copyright in a work are to the doing of it in relation to the work as a whole, or to any substantial part of it.
The Case Law In terms of litigation, Part III of the Act got off to a slow start. A recent article in the European Intellectual Property Review by Lionel Bentley and Alan Coulthard identified only a handful of cases most of which were unreported. However, the law was advanced greatly by the following decisions in 1997:
Ocular Sciences Limited v Aspect Vision Care Ltd. and Others  RPC 289
Farmers Build v Carier Bulk Materials Handling (1997) 26 March (Rattee J).
Ocular Sciences In Ocular Sciences the plaintiffs claimed design right in 19 "families" of lens designs. The "lenses" in each family varied in size by microscopic amounts. The plaintiffs contended that a separate design right subsisted in each and every lens design of each and every "family" and alleged that the defendants had infringed those design rights by making contact lenses to some 200 of those designs. Laddie J found that there had been no copying but added that the claim would have failed on the following grounds:
design right in any feature that enabled a lens to be inserted into an eye was excluded by the "must fit" or "interface" exception of s. 213 (3) (b) (i) of the Copyright Designs and Patents Act 1988 ("the CDPA"), and
all other features of shape and configuration on which the plaintiffs relied were "commonplace" within the meaning of sub-section (4).
Critchley The plaintiff claimed design right in the designs of a plastic box and a magnetic core and plastic bobbin that it contained. The defendant relied on the previously mentioned "must fit" exception. The plaintiff applied to strike out that part of the defence on the ground that the exception did not apply to a component of the relevant article. Laddie J dismissed its application holding that the exception might apply to internal components.
Parker v Tidball The designs in which the plaintiff claimed design right were of 6 leather cases for mobile telephones. The defendant relied on the "must fit" and "commonplace" exceptions. The deputy judge considered the design features of each of those cases holding that design right subsisted in some of those features but not in others. He concluded that the defendant had copied several features in which design right subsisted.
Farmers Build The plaintiff commissioned the defendant to design and make a slurry separator based on existing designs but with some features of its own. Before the contract was performed the defendant terminated it owing to the plaintiff's financial difficulties and started to manufacture its own machine. The defendant's machine was similar to the one that it had been commissioned to produce. The plaintiff claimed that design right subsisted in the machine as a whole and in each of its components, that it had acquired those rights by virtue of its commission and that the defendant had infringed those design rights by making a machine and components to the plaintiff's design. Rattee J agreed that design right subsisted in those designs, that the plaintiff owned them and that the defendant had infringed them, but he gave judgment to the defendant on the ground that the plaintiff had acquiesced in the infringement.
Comment An interesting feature of those cases is the different approaches as to whether or not there had been an infringement. When considering whether a copyright has been infringed an English court will take the work as a whole and see what (if anything) has been taken. If it is a "substantial part" - that is to say, a qualitatively important part of a work - then, absent other defences, there is an infringement. A very small part of a work can be substantial. In Exxon Corporation v Exxon Insurance Consultants International Ltd.  RPC 69 Graham J suggested obiter at 79 that the noun "Jabberwock" could be a "substantial part" of Lewis Carol's "Through the Looking Glass". By contrast, if what has been taken is unoriginal it cannot be a "substantial part" however long it may be because copyright subsists only in original works. The best example of that approach isWarwick Film Productions Ltd. v Eisinger  1 Ch 508 where the material that had been reproduced was the transcript of a trial. The advantage of this approach is obvious from a comparison of English and American case law. In America there is often considerable argument over whether copyright subsists in a fragment of a work and the courts have had to devise complex filtration tests to identify illicit reproduction.
As it was the legislature's intention that copyright principles should be applied, a similar approach might have been expected in copyright cases. According to the article by Mr. Bentley and Mr. Coulthard, Rattee J adopted that approach in Farmers Build. They say that he held that design right subsisted in a composite configuration of three machine parts notwithstanding that a feature of one of those parts was excluded from protection by the "must fit" exception and another was excluded by the "commonplace" exception. However, Mr. Robert Englehart QC rook a very different approach in Parker v Tidball. He took as his starting point the following words of Laddie J from his judgment in Ocular Sciences at page 432:
"The proprietor can choose to assert design right in the whole or any part of his product. If the right is said to reside in the design of a teapot, this can mean that it resides in the design of the whole pot or in a part of the pot such as the spout, the handle or the lid, or indeed part of the lid. This means that the proprietor can trim his design right claim to most closely match what he believes the defendant to have taken. The defendant will not know in what the alleged monopoly resides until the letter before action or, more usually, the service of the statement of claim. This means that the plaintiff's pleading has particular importance. It not only puts forward the claim but is likely to be the only statement of what is asserted to be the design right."
Mr. Englehart dissected each of the designs finding that some features of each design were excluded by the "must fit", "commonplace" or other exception and others were not. Taking the features that were not excluded he looked at the defendant's case to see whether or not that feature was present. On finding that it was, and in the absence of a reasonable explanation from the defendant, he held that there had been copying. He made no qualitative analysis of the functional or other value of the allegedly reproduced feature.
It is submitted that the approach of Rattee J is to be preferred as it is closer to the policy of the Act. Upon closer analysis, Laddie J's judgment in Ocular Sciences does not actually conflict with that of Rattee J. The above dicta appear early in the portion of the judgment on the design right issue and rightly stress the importance of precise identification of the integers of the claim. It is obvious from his comprehensive if concise summary of the technical evidence on pages 423 and 424 that Laddie J had in mind the functional importance of the features alleged to have been copied. However, he did not need to discuss it in his judgment because the plaintiffs had failed to prove that their individual lens designs were copied into the defendants'. Any other approach would lead to absurdity and injustice as it is usually possible to find some common features in any two competing products if one looks closely enough. Many of those similarities will be knocked out by the "commonplace", "must fit", "must match" or "commonplace" exceptions but it is possible to envisage some that might not. It is difficult to believe that it was Parliament's intention that a manufacturer should deprive consumers of a competing product merely because his competitor copied a trivial detail. The old law would have dealt with the problem by regarding such copying as insubstantial and it is inconceivable that the current law does not do likewise.
First published in the Northern Intellectual Property Review in June 1997. Also in IP/IT Update