UK: Lambretta Crashes Out In Court Of Appeal. Has Copyright Protection Fallen Out Of Fashion?

Casualwear brand Lambretta has suffered a defeat in the Court of Appeal in a case of particular relevance to clothing designers. The judgement was delivered on 15 July 2004.

Lambretta had sued Teddy Smith and Next for allegedly copying their design for a tracktop. Lambretta had not claimed originality in the entire design (the tracktop had a retro-vintage theme recalling sportswear of the 1970s and early 80's). Rather, they claimed originality in their choice and layout of the colours of the garment (blue for the body, red for the arms, white for the zip). Teddy Smith and Next had produced very similar garments.

For a designer, this prompts a straightforward question – can I stop someone copying my choice of colourways? - but the Court of Appeal struggled to deliver an easy to understand judgment and unfortunately for Lambretta, their claim fell between two different areas of protection – design right and copyright.

Lambretta argued that their juxtaposition of colourways was "an aspect of shape or configuration of the whole or part of an article". As such, they claimed that their design should be protected by the unregistered design right under s. 213(2) of the Copyright Designs and Patents Act 1988.

This argument was dismissed unanimously by the Court of Appeal on the footing that the colourways had nothing to do with the configuration of the tracktop. Colouring a pre-existing article did not lead to the creation of an unregistered design right.

The Court also noted that s.213 excluded "surface decoration" from protection as an unregistered design right. The Court held that the colourways were surface decoration even though parts of the tracktop were dyed right through.

One might have expected Lambretta to have tried to rely on the undoubted artistic copyright in their designer's drawing rather than the more technical unregistered design right. The reason Lambretta argued so hard for design right protection, however, was because of s.51 of the Copyright Designs and Patents Act 1988.

This highly technical provision seeks to stop designers relying on the copyright in their 2D artistic drawings as a means of stopping someone making a 3D object based on that drawing.

One of the key arguments before the Court of Appeal was whether s.51 should only exclude copyright protection in cases where the unregistered design right was found to subsist. Lambretta argued that if they had no design right, then they should be entitled to enforce their artistic copyright. Their argument found sympathy with Lord Justice Mance, but not with the majority judgments of Lord Justices Jacob and Sedley. So Lambretta were left with no protection in design right or copyright, even though there seemed to be some evidence that they were copied by Teddy Smith.

Securing protection for the shape or cut of a garment has always been a challenge for designers. The Lambretta decision has gone one step further, excluding colourways from the scope of protection whether as unregistered design rights or artistic copyright.

But ironically for designers they may now be able to rely on the new European unregistered design right. This only came into force after Lambretta brought their claim.

Provided the design is "new" and "of individual character", this can protect "the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation". The colourways of the Lambretta's tracktop – had the design been created after 6 March 2002 - might have been protected.

Unlike the UK unregistered design right (that lasts for up to 15 years), the European unregistered design right only lasts for 3 years. However designs meeting these European criteria can be registered to secure enhanced protection for up to 25 years.

Designers should reconsider their collections in light of the new EU protections and determine whether they offer rights not otherwise available under UK law. The Court of Appeal's judgement in Lambretta is not the last we will hear on colourways.