Flashing Badge

GREY AREAS CLARIFIED WITH GROUND BREAKING COURT DECISION Andrew Lee of McDaniel and Co looks at a recent case, Flashing Badge v Groves, to illustrate the importance of understanding exactly how various laws can protect graphic designers and Section 51 of the Copyright Designs and Patents Act 1988 is an interesting piece of legislation directly affecting ACID members when they create new products. Often these products will have 3D features (shape) and also surface patterns or decoration applied to the product. What is the law? Section 51 (1) states: It is not an infringement of any copyright in a design document or a model recording or embodying a design for anything other than an artistic work or a typeface, to make an article to the design or to copy an article made to the design. Section 51 (3) clarifies sec 51 (1) states:“Design” means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article other than surface decoration. “Design document” means any record of a design, whether in the form of a drawing, a written description, a photograph, data stored in a computer or otherwise. Confused, then don’t be! In the Flashing Badge (FB) and Groves (G) case, FB owned the rights in a range of badges, each featuring a graphic work such as “Birthday Girl” (see above). The shape of the badges followed the outline of the graphic work. If the graphic work were removed, the shape of the badge would remain the same. Therefore, the badges comprised aspects of design right (the shape) and also copyright (the graphic works), however both were recorded in the same design document. G imported and offered for sale almost identical badges. FB commenced proceedings for copyright infringement and the issue of Section 51 arose. FB submitted that section 51 was the interface between design right and copyright and it was necessary in considering the defence under section 51, to distinguish between the copyright and design right in question even if recorded in the same design document. However, G claimed that, although the graphic works were artistic works, section 51 provided a defence as they were part of the design for a badge which was not itself an artistic work. As they were part of the design document for the badge, Section 51 provided a defence.

The High Court held:

  • Each drawing was a ‘design document’ within the meaning of section 51(3). However each consisted of two designs. Firstly, the design of the shape of the badges and secondly the graphic works applied to the badges.
  • Section 51 was irrelevant in respect of the graphic works, because they were for an artistic work, but did apply to the non artistic work i.e. the badge shape.
  • It could not be said that the graphic works could only exist as part of the badge. They could exist separately and be applied to other products (i.e. the side of a mug). Therefore, Section 51 afforded no defence to the copyright claim.

The decision is useful as designers can safely record their designs in one document or model, provided that any surface pattern or decoration can exist separately from the product itself, without section 51 providing a defence to infringers.

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