A Fulton Company Ltd. v Totes Isotoner (UK) Ltd.

This appeal is from part of a judgment of HHJ Fysh sitting in the Patents County Court. The claimant (“Fultons”) sued Totes Istoner (UK) Ltd. (“Totes”) for infringement of registered design and unregistered design in respect of 5 versions (called “A” to “E”) of cloth cases for portable folding umbrellas. The Judge held that the registered design was valid and infringed by A and B but not by C-E. From that there is no appeal or cross-appeal. The Judge went on to hold that all 5 types infringed unregistered design right. Totes appeal only one point of law in respect of types C-E.

The facts are set out clearly in the judgment. They are no longer in dispute. So I can summarise. All the cases are for umbrellas which fold into an oblong shape. The cases are correspondingly oblong. In each instance the umbrella is to be pushed into the end of the case. The differences between the variants all lie in the “cuff” – the open end into which umbrella is pushed. For present purposes there is no difference between types A and B on the one hand and types C-E on the other. So I will call them A and C.

Mr Fulton’s design drawing is the following:

The drawing is not to scale but conveys all you need to know. The article is an open flat box, 21x5x3 cm in overall dimensions. The “cuff” is about 4 cm long. There is a slit in one corner of the cuff – to make insertion of the umbrella easy. The stitching along the sides of the case give it a sharp box-like appearance – without it the case would be less defined visually. The cases made and sold by Fulton (“Miniflat cases”) are made to this design.

The first Totes cases (i.e. A and B) were straight copies of the Fulton cases. They too had a slit and stitching. When Totes learned of the registered design they hurriedly changed their cases to types C-E. The change was to remove one short side of the cuff altogether. This is an agreed picture of C:

It is not disputed that Fultons own unregistered design right in the whole, slit, design. That is what is shown in the design drawing and was the design of the first article made by Fultons. For present purposes it does not matter whether one goes by the drawing or the article, for s.213(6) of the Copyright Designs and Patents Act 1988 (“the Act”) says:

“Design right does not subsist unless and until the design has been recorded in a design document or an article made to the design.”

Fultons claimed infringement on two bases – that C was made by copying the design of the whole article and was substantially to that design or that C was made by copying the design of part of the whole article and was an exact reproduction of that part. The claim failed on the former basis (from which there is no cross-appeal) but succeeded on the latter. It is that latter basis which is under challenge in this appeal

I turn to set out the key provisions of s. 213 dealing with subsistence of unregistered design right and s.226 dealing with infringement:

Design right is a property right which subsists in accordance with this Part in an original design.

In this Part “design” means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article.

Design right does not subsist in –

A design is not ‘original’ for the purposes of this Part if it is commonplace in the design field in question at the time of its creation.

Design right subsists in a design only if the design qualifies for design rights by reference to [details do not matter]

s.226

The owner of design right in a design has the exclusive right to reproduce the design for commercial purposes –

Reproduction of a design by making articles to the design means copying the design so as to produce articles exactly or substantially to that design, and references in this part to making articles to a design shall be construed accordingly.

Design right is infringed by a person who without the licence of the design right owner does, or authorises another to do, anything which by virtue of this section is the exclusive right of the design right owner.”

In their pleading Fultons put their alternative cases as follows:

“The Claimant is entitled to design right …in the design of the whole of the Miniflat case (irrespective of its precise dimensions) alternatively in the design of that aspect of the Miniflat case which consists of the whole of it (irrespective of its precise dimensions) minus the shorter side of the cuff adjacent to the vent…”

The Judge held Fultons were entitled to design right both in the whole of the case and in the alternative “cut-out” design described by the underlined words. As I have said, he held that types C-E did not infringe the right in design of the whole article but that it did infringe the right in the “cut-out” design. Fultons do not cross-appeal the finding of non-infringement of the design in the whole case – rather grudgingly accepting that it would be difficult to show an error of principle which is the standard needed to succeed on appeal in this sort of case, see Designers Guild v Russell Williams [2001] 1 WLR 2416.

Totes say the Judge was wrong in law – that the law confers no separate unregistered design right in a cut-out design. They say that the notion of such a design is – to use the Judge’s word - a “chimera.” Only one thing was designed, the Miniflat case as a whole – the “cut-away” design is a different design, not envisaged by Mr Fulton. They reinforce the submission by the forensic point that Mr Fulton in his evidence positively asserted that customers preferred the slit design to the cut-out design – thus emphasising the fact that the cut-out is different from the slit.

The Judge rested his decision both on the language of s.213(2) and authority. Ultimately the question turns on the language, but it is convenient to consider authority first. It is all one way – against Totes. I turn to review first the cases and then the learned writers.

The two most important cases are Ocular Sciences Ltd v Aspect Vision Care [1997] RPC 289 and a previous umbrella case brought by Fultons, A Fulton Co Ltd v Grant Barnett & Co Ltd, [2001] RPC 36. I can go straight to the latter because Park J quotes the key passage in Laddie J’s judgment in OSI. At p. 270 Park J said this:

“Section 213(2) is a short subsection, but it contains most of the fundamental concepts which go to determine whether design right subsists, and, if so, what is subsists in. The words are “the design of any aspect of the shape or configuration … of the whole or part of an article”. So the core meaning of “design” is the shape or configuration of an article. Prima facie that would mean the shape or configuration of the whole article. But it does not have to be the whole article: the design can be the shape or configuration of the article, and apparently any part may be sufficient. And the scope of what design right may subsist in is enlarged further by the reference to “any aspect” of the shape or configuration concerned. This creates a large number of possible permutations which can arise in the case of any one article. Take an umbrella. Design right might be claimed to subsist in the whole aspect of the shape or configuration of the whole of the umbrella, or it might be claimed to subsist in one or more particular aspects of the shape or configuration of one or more particular parts of the umbrella. Then again, each of the handle and the case, distinct from the whole packaged umbrella, might be regarded as an “article” by itself for the purposes of formulating the claim to design right.

In this connection the manner in which the claimant formulates its particulars of claim in the pleadings is important. Laddie J focused on this point in Ocular Sciences Ltd v Aspect Vision Care [1997] RPC 289 at 422. He said:

“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 a 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.”

…..

Fulton has formulated its claims to design rights in a number of ways. I am not going to go through them one by one. The principal claims identify the Flat Compact handle as one subject of design right, and the Miniflat case as another. The claims may be put on the basis that each is an “article”, or on the basis that the article is the whole umbrella and the handle and case are “parts” of it. In relation to the handle Fulton claims design right in the shape or configuration of part of it. That part is the handle minus the protuberant rim which, in illustration 2, can be seen running round the bottom part of the handle. The illustration shows that the alleged infringing article, which is the handle on Grant Barnett’s 6F Ultra Compact, does not have the protuberant rim. In relation to the Miniflat case, Fulton claims design right in the whole aspect of the shape or configuration of the whole of the case. As a matter of pleading, all of these ways in which Fulton formulates different elements in its claim seem to be to be satisfactory.”

Judge Fysh, correctly for the Patents County Court, followed Park J. And Mr Thorley QC for Totes accepts that he must submit that Park J was wrong in law – Park J’s finding that unregistered design right lay in part of the design of the umbrella handle (the “knob” without the rim) is exactly equivalent to the finding in this case of unregistered design right in the slit design without the cut-out. As regards what was said by Laddie J, Mr Thorley submitted (correctly) that the point at issue here did not strictly arise. He submitted that what Laddie J said could be applicable in circumstances different from the present – where the defendant had not created a fresh and different design.

There are several other cases in which the point now raised was not taken expressly, but in which the court and parties took it for granted that unregistered design right could be asserted in an aspect of part only of an overall design. I run through them briefly:

Whilst, the “visually significant” test is too narrow (though not for the purposes of that case or cases concerned solely with the physical appearance of a design), it is clear that the case proceeded on the basis that there could be a claim to unregistered design right in part of a whole article.

Next is Mark Wilkinson Furniture v Woodcraft Designs [1998] FSR 63. At p. 72 Jonathan Parker J said:

“The design in which the plaintiff primarily claims design right is now pleaded as “the whole external shape and configuration of that part of the wall units which are used in its Cook’s Kitchen comprising the front, front corners, sides and cornice” (see paragraph 3 of the reamended Statement of Claim).

Save to the extent that it is affected by the exclusions in section 213(3), the design so pleaded plainly falls within the definition of design in section 213(2) in that it is a design of an aspect or aspects of the shape or configuration of the unit.”

Neither Jonathan Parker J nor any counsel questioned the formulation of the right as subsisting in a part of the design of the wall units and the case proceeded on that basis.

In Ultraframe v Fielding [2003] RPC 435 at 457 Laddie J said:

“Therefore it is possible for design right to subsist in the design of the part of the article which is not excluded under the must match provisions”

I do not think any of the other cases cited really even touched upon the point obliquely and so do not refer to them.

Not only are the cases stacked up against Mr Thorley’s argument but so are all (no less than five) textbook writers. I start with Russell-Clarke on Industrial Designs, 6^th Edn. 1998 by Martin Howe QC. Para. 405 says:

“Thirdly, unlike a registered design, which protects the design applied to a whole article, unregistered design right subsists in the shape or configuration of part of an article, or indeed in “any aspect” of the shape or configuration of the whole or part of the article. Thus, a single article (or a design document recording the design of an article) will normally embody not a single design right, but a large bundle of different design rights subsisting in the whole and every part and every aspect of the shape and configuration of the article, provided that the part or aspect concerned is original and is not otherwise excluded from enjoying design right by one of the exceptions considered in the following paragraphs. This concept of a bundle of design rights becomes significant when the question of infringement is considered, because, except in the case of slaving copying of the whole article, the design right proprietor will seek to match a design right which he can contend subsists in a part or aspect of the design of his article with the features of the alleged infringing article which he contends have been copied.”

The first supplement (2002) to the 14^th Edition of Copinger and Skone James (Kevin Garnett QC and Gillian Davies) says (para 13-44):

“The ‘design’. This definition is extremely wide. For example, in the case of a teapot, a plaintiff may choose to rely on the design of the whole pot but he may also rely on the design of one or more of its parts or aspects – such as the spout, the handle, the lid or even part of the lid. Given the width of this definition, it is important to identify clearly the design being relied upon.”

For this the authors rely, unquestioningly, on Ocular Science Limited.

The Modern Law of Copyright and Designs (3^rd Edn., 2000, Laddie, Prescott and Vitoria), runs thus:

“53.16

There is no reason why a proprietor should not claim design right in all aspects of the shape or configuration of his article which he believes could give him a commercial edge over his competitors. In particular, when it comes to suing a competitor for infringement he will be well-advised to rely, individually and collectively, upon each of those separate aspects of shape or configuration which appear to have been copied by the competitor. Needless to say, a statutory monopoly which allows the proprietor to mix and match in this way and which deprives a potential infringer of any way of knowing the scope of the exclusive rights which he faces unless and until the proprietor defines precisely what are alleged to be his design rights is ripe for abuse”.

The last sentence of this paragraph is the only place where there is any criticism of the rule. I do not really see why design right effectively in part of an article is ripe for abuse. The right is not a true monopoly – it is limited to preventing copying and copyists must know what they are copying. In the next paragraph the authors say this:

“53.19

As mentioned above, the width of the definition of designs which can be protected makes this right ripe for abuse. On the wording of the Act it would be possible to suggest that any part of the aspect of any article could be the subject of protection. However it is likely that the courts will wish to put some reasonable limit on what is protectable. If a proprietor relies upon some small part of the design of an article a court may decide that to isolate that part from the rest of the context in which the proprietor had employed it is to give it far greater visual or spatial importance and impact than it had when created by the designer. Indeed, isolation from the rest of the design features with which it was created may have the effect of producing a ‘new’ design. If that is so the court may decline to look at that part of the design in isolation from the rest of it.”

I am not sure I agree with the last part of this paragraph. It does not call for decision here. I can see, however, in principle (see below), room for an argument on different facts from here, that what has been taken is not really part of a design at all. Actually it is difficult to think of a realistic example, however. In practical terms defendants will either copy a readily identifiable part or not copy at all.

The Law of Industrial Design (Tootal, 1990) para.1803 says:

“For the purposes of Pt III of CDPA 1988, s.213(2) defines ‘design’ as meaning: ‘the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article’. Thus (unlike registered designs) the right extends from the whole to any part of an article, but is restricted to aspects of shape or configuration only. The latter aspects may be internal or external, and the White Paper made it clear (at para. 3.34) that it was the government’s intention that design right would be apt to cover the internal configuration of a semiconductor chip (see chapter 24). Not only, therefore, is there no requirement for ‘eye-appeal’ of the kind necessary for a registrable design, but it would seem that the design need not be visible, at least to the naked eye”.

Finally there is Industrial Design Law (Fellner, 1995):

“2.228

Again unlike registered designs, it need not be the whole of the article with the design applied to it which is considered. Design right can reside in only aspects of an article’s shape or configuration - and in only part of an article, internal or external. There is no requirement, as for registered designs, that that part be made and sold separately. Nor does “part of an article” only mean part of a complex article made up of many parts – like one single part within a car or washing-machine. It can also cover what in the registered design context would be a single “feature” of a single article, whether that article is large (the “power” domes on the bonnet of a Ford car as part of the overall design of a car body) or small (one tube or stud on a LEGO brick). Several different design rights may therefore be claimed in a single article.”

So everyone up to now has read s.213(2) as meaning that a designer who finds part of his design copied is entitled to complain about that as such, even if the remainder of his design has not been copied. Mr Thorley submits that goes too far and is wrong. You cannot artificially create a new design right under the guise of selecting a part of an actual design. Here, the cut-out design is not part of the design relied upon – it is a different design from the slit design as the Judge has held.

I reject Mr Thorley’s submissions. Firstly the very language of the statute is against him. If one reads the definition of s.213(2) into s.213(5) and omits alternatives, s.213(5) says: “unregistered design right subsists in any aspect of the shape and configuration of part of an article.” Mr Thorley was not able to provide a satisfactory explanation of what was meant by part. He accepted the examples given by Laddie J of handles (of a teapot in OSI or a fork in Electronic Techniques v Critchley Components). If someone copied just the handle of a fork (putting their own design of tines, or a knife or spoon), then, given that the handle was original and not commonplace, they would infringe unregistered design right. And they would do so not because the defendant was making an article exactly or substantially to the design of the whole fork (though that might be the case too) but because they were making an article to the design of part of the fork, the handle.

Mr Thorley submitted that these examples were different from the present case in that here the change altered the whole design, making a different overall design. But that would be just as true if a different teapot were provided with a copied handle. In both cases part of the copied design is to be found in the alleged infringement. A man may well create a different design when he copies only part of the design of another. A new design does not justify that copying.

Of course in some cases one may not be able to discern in an alleged infringement a part of a design said to have been copied. In argument I suggested a shape (e.g. a cartoon character) cut or notionally cut out of one side of a Fultons case. Such a shape would not on any rational basis be “a part” of the case. It will be noticed that I used the word “discern” rather than “see” because unregistered design right extends beyond the visually appreciable to other aspects of the design of an article, for instance semiconductor chips and electronic circuits (see Mackie Designs vBoehringer [1999] RPC 717).

Secondly Mr Thorley tried to hang something on the word “aspect” to narrow the meaning of s.213(2). He suggested that it meant “a way of looking at”, relying on one of the meanings given in the Concise Oxford Dictionary. So, he submitted, what the section was driving at was a way of looking at the whole design or a part of it. But the acontextual meaning is only one of many. Both sides regaled us with dictionaries which in the end do not help resolve the contextual meaning. I think Mr Thorley’s concentration on the visual is too narrow for the reasons I have just mentioned. Moreover it is too intangible – the subsection is trying to define “design” not a way of looking at a thing or part of a thing. Mr Arnold QC for Fulton suggested “aspect” was used to avoid a double use of the word “part” (“any part … of any article”). That is a little closer to the mark, but to my mind the notion conveyed by “aspect” in the composite phrase “design of any aspect of the shape or configuration of the whole or part of an article” is “discernable” or “recognisable.”

Thirdly Mr Thorley’s argument overlooks the exceptions in s.213(3), especially the “must fit, must match” exceptions. They are features of shape or configuration excluded from the subsistence of design right. They are features which, if they are present, will be parts of an article (e.g. the fitting bits of a new design of electrical plug). Plainly it was thought that unless they were excluded they would be covered by the word “part” in the definition of design. And it is to be noted that that the must fit/must match exception is put in at the stage of defining design right, not at the stage of providing exceptions to infringement.

Fourthly Mr Thorley tried to get something out of the provision which requires fixation, namely s.213(6) quoted above. He submitted that the “cut-out” design was never recorded in a design document or article. So, design right could not subsist in it. But that is beside the point. When the slit design was recorded, so was each and every part of it. The argument is a variant of the “I can copy a part if I am making a new design” argument and fails for the same reason.

Fifthly there is Mr Thorley’s argument based upon qualification for design right. Who, he asked forensically, is the creator of the design chimera? And is he “a qualifying individual” within the meaning of s.217? I think this all misses the point. Indeed I think the whole notion of a “design chimera” is somewhat misleading. The Act is not concerned with any chimera. It is merely telling you that “design” covers not just any aspect of the design of the whole article but also any aspect of the design of part of it. There is no chimera. The designer of the whole thing necessarily also designs all its parts. For the same reason I do not fully go along with Laddie J’s suggestion that what the proprietor can do is to “trim his design right claim.” It is not really a question of “trimming” – it is just identifying the part of his overall design which he claims has been taken exactly or substantially. And although Laddie J was right in saying that the defendant will not know in what the alleged (my emphasis) monopoly resides until the letter before action or the claim form, that does not mean the defendant does not know where he stands before then. The man who copies a part of an article, exactly or substantially, will know what he has taken. It is true that it will be for the designer to formulate his claim properly in any proceedings, but the subsistence of his rights does not depend on how he frames his claim.

Sixthly Mr Thorley makes the forensic point that if the Judge is right then designers are given greater rights than they have in their overall design. Thus here, type C does not infringe the design right in the whole article. He reinforces the submission by pointing out that even the registered design does not extend to cover the cut-out design. To my mind the answer to this point is simple – Parliament has gone out of its way to protect not only overall designs but also parts of overall designs. The protection is only against copying. It is not necessary to copy, save in the excepted cases of must-fit and must-match. Nor is their any reason why the long (25 year) right given by a registered design (a true monopoly which has no copying requirement for infringement) should also be the outer limit of a right giving a much shorter period of protection merely against copying of part of an article.

Finally Mr Thorley did not satisfactorily answer Mr Arnold’s point based upon the Design Right (Semiconductor Topographies) Regulations 1989 (SI 1989 No.1100). Rights in such topographies are now covered by unregistered design right under the 1998 Act having, for a short period, been covered by a free-standing right given by the Semiconductor Products (Protection of Topography) Regulations 1987. Under the 1989 Regulations designs of what clearly are only parts of a whole chip are considered to be designs. For Clause 2 of the regulations says:

“”Semiconductor topography” means a design within the meaning of section 213 (2) of the Act which is a design of either of the following:

(a)

the pattern fixed, or intended to be fixed, in or upon –

(i)

a layer of a semiconductor product, or

(ii)

a layer of material in the course of and for the purpose of the manufacture of a semiconductor product, or

(b)

the arrangement of the patterns fixed, or intended to be fixed, in or upon the layers of a semiconductor product in relation to one another.”

The design of even a single layer of a whole chip is taken as constituting a “design”. Now it might normally be said that one cannot construe the Act by reference to a subsequent statutory instrument. But in this case the Regulations are intended to implement an EU Directive, 87/54/EEC and one does construe an Act in favour of implementation rather than against it.

Incidentally the reference to design including even the arrangement of patterns within a layer in relation to other layers further makes it clear that Mr Thorley’s “aspect” argument must be wrong. Such an arrangement cannot be described as “a way of looking at” the chip or part of it.

In the result I think the appeal fails. Totes have copied an aspect of the design of part of the Miniflat case – as I have said they have copied nearly all of it. Subject to complying with the general qualifications for subsistence of unregistered design right a designer is entitled to prevent the copying exactly or substantially of part only of his design, unless that part is excluded from protection because it is not original (i.e. is copied or is commonplace) or falls within the must fit/must match exceptions or any combination of these.

Lord Justice Kennedy: I agree.

Master of the Rolls: I also agree.