The Flashing Badge Company v Brian David Groves t/a Flashing Badges by Virgo and Virgo Distribution* (Rimer J.; [2007] EWHC 1372 (Ch); 14.06.07)

The claimant commissioned a graphic designer to design novelty badges bearing messages of a familiar type. The copyright in the designs for the badges were assigned to the claimant. A key feature of the design of each badge was that its outline shape followed the outline of the artistic design which formed the subject matter of the face of the badge. The defendant subsequently began to import virtually identical badges from China.

The issue was whether Section 51 of the CDPA 1988 provided a defence to a claim of infringement of the admitted copyright in the graphic design. Section 51 provides that it is not an infringement of any copyright in a design document for anything other than an artistic work or typeface to make an article to the design. For the purposes of Section 51, “design” excludes surface decoration.

Rimer J held that each drawing was a “design document” within the meaning of Section 51 which incorporated (a) a design for an artistic work; and (b) a design for something other than an artistic work, namely an article in the nature of a badge in the same outline shape as the artistic work. Section 51 has no relevance in respect of (a) (as it is a design for an artistic work) although it is relevant to (b) as a design for something other than an artistic work. Rimer J concluded that Section 51 can only apply to a copyright claim in the design minus the surface decoration; it provides no defence in respect of any infringement of the copyright in the graphic design which provides the surface decoration of the badges.

Rimer J distinguished the facts of the case from those of Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd [2005] RPC 88. In Lambretta the court found as a majority that on the special facts the colourway of a tracksuit top did form part of the “shape and configuration” of the design (rather than merely surface decoration) and could only exist as part of the clothing to which it was applied. By contrast, the artistic work on the face of the badges could exist independently to the shape of the badge and could be applied to any other substrate.

Consequently, Rimer J held that Section 51 afforded the defendant no defence to the claim and granted summary judgment.