B e f o r e :
| Pro-Tec Covers Limited
|- and -
|Specialised Covers Limited
Specialised Car Covers Limited
Mr Douglas Long
Mr Elliot Long
Piers Acland QC and Chris Hall (instructed by Squire, Sanders & Dempsey (UK) LLP) for the Defendants
Hearing dates: 6-8 September 2011
Crown Copyright ©
Richard Meade QC:
|The products and designs in issue||21|
|The sequence of events in overview||32|
|The parties' cases in essence||36|
|Interest by the Defendants in the Claimant's products||45|
|Specific events and indicia said to evidence copying||47|
|The statutory exclusions||53|
|Application of the law to the design features pleaded||56|
Previous relationship between the parties
The design process for caravan covers
Mrs Anne Proctor
Miss Christina Mageen
Mr Douglas Long
Mr Elliot Long
Mr Paul Smith
Mr John Lord
Mr Michael Grindrod
Mr Bob Swain
The products and designs in issue
Products in issue
The pleaded designs
"II The A1 Design
(7) United Kingdom design right subsists in the design of the following aspects of shape and/or configuration of the Claimant's said A1 design:
a. The "strap strip", consisting of 2 broadly rectangular sheets which are to be connected to the caravan awning rail and the main front cover via piping and straps respectively. Neither the piping nor the straps themselves are claimed per se.
b. The width of the said strip.
c. The incorporation and location of piping along one edge of each of the 2 broadly rectangular sheets. (The Claimant's design used 2 distinct sheets (see drawings CF 27 and CF 79, August 2009) whereas now (see drawing CF79, 17 November 2009) a single piece of piping is used to link the 2 sheets).
d. The extension of the piping along the entirety of such edges.
e. The use of 5 fixing straps to connect the 2 strap strip sheets to the front cover, and the locations thereof; the use of 6 fixing straps for such purpose, and the locations thereof; and the use of 8 fixing straps for such purpose, and the locations thereof. (Each of these 6 and 8 fixing strap arrangements has been copied, hence each is separately claimed).
f. The incorporation and location of 2 reflective panels on the front cover, one on each side.
g. Any combination of any of the above aspects.
III. The A2 design
(8) United Kingdom design right subsists in the design of the following aspects of shape and/or configuration of the Claimant's said A2 design:
a. The incorporation and location of piping along one edge of the front cover. The piping is not claimed per se.
b. The extension of the piping along the entirety of such edge, save that it stops just before the corner detailing.
c. The incorporation and location of three curved extensions along the opposite edge of the front cover to the piping, and the hole in the middle of each such extension. The suckers which are placed in such holes are not claimed per se.
d. The incorporation and location of 2 reflective panels on the front cover, one on each side.
e. The shape and configuration of the corner detailing on the two bottom corners of the cover.
f. Any combination of any of the above aspects.
IV The B2 design
(10) United Kingdom design right subsists in the design of the following aspect of shape and/or configuration of the Claimant's said B2 design:
a. The overall shape and configuration of the skirt itself;
b. The incorporation and location of the two cut outs, which centre on the grab handles of the caravan;
c. The shape and configuration of the two bottom corners of the skirt."
The sequence of events in overview
The parties' cases in essence
a. After some years of selling the predecessor design, it came up with the new strap strip design.
b. It employed Mr Lord partly in order to sell the new design and he became familiar with it and had in his possession samples (and also samples of the A2) as well as drawings of the Claimant's designs on his laptop.
c. He then left on bad terms taking with him samples and drawings.
d. He applied to the Defendants for a job and by agreement with Mr Elliot Long and Mr Douglas Long he was hired specifically to facilitate copying of the Claimant's designs; his ability to provide information for such copying was what made him attractive to the Defendants.
e. Thereafter Mr Elliot Long, Mr Douglas Long and Mr Paul Smith deliberately and knowingly copied the Claimant's designs of the A1, the A2 and the B2.
f. They had the necessary information for such copying either from samples brought by Mr Lord, or from drawings brought by Mr Lord, or from purchasing the Claimant's products on the market, or by seeing pictures of the Claimant's products in marketing materials or on the internet.
a. They had had an interest in producing front towing protectors for some time but had not acted on it.
b. Mr Lord was hired for his sales ability and not for his knowledge of the Claimant's products.
c. They started their work on the universal front towing protector based on something akin to the predecessor design and introduced a strap strip as I have explained above.
d. They had no need to copy because they were already skilled in designing caravan and other covers.
e. They were motivated to produce covers for the new Bailey caravans because they were reported to be prone to damage and Mr Douglas Long came up with the design independently of the Claimant using his general skill in designing covers, the idea of using suckers coming from his knowledge of how windscreens are carried in car production.
f. Mr Smith then cut down that design to make the skirt.
g. There are individual explanations for any further similarities between the parties' products such as the scalloped edge on the A2 design.
Interest by the Defendants in the Claimant's products
Specific events and indicia said to evidence copying
Coincidence in timing of Mr Lord's recruitment and the Defendants' design effort
The Defendants' first strap strip version
The scalloped edge on the A2
Grab handles on the B2 skirt
The statutory exclusions
"(3) Design right does not subsist in
(a) a method or principle of construction,
(b) features of shape or configuration of an article which
(i) enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function"
'13. Thirdly, the textbooks support this approach to interpretation. The Judge quoted a passage from Russell-Clarke on Copyright in Industrial Designs (seventh edition), at para 380, which analyses the effect of s 213(3)(a) in these terms:
"A method or principle of construction is a process or operation by which a shape is produced, as opposed to the shape itself. To say that a shape is to be denied registration because it amounts to a method or principle of construction is meaningless. The real meaning is this: that no design shall be construed so widely as to give to its proprietor a monopoly in a method or principle of construction. What he gets is a monopoly for one particular individual and specific appearance. If it is possible to get several different appearances, which all embody the general features which he claims, then those features are too general and amount to a method or principle of construction. In other words, any conception which is so general as to allow several different specific appearances as being made within it, it is too broad and will be invalid."
14. The Judge agreed with that analysis, and so do I. It is a view which is supported by the editors of Copinger and Skone-James on The Law of Copyright (15th edition). At para 1355, they state that the purpose of the section is "to ensure that designers cannot create an effective monopoly over articles made in a particular way". Jacob J appears to have taken the same view in paras 14 and 15 in Isaac Oren -v- Red Box Toy Factory  FSR 785 Having decided that "it is possible to make a device visually very different from Mr Oren's designs but which works the same way", he went on to hold that "[i]t follows that there is no principle monopolised here only a visual embodiment of a device constructed in accordance with a principle" '
'27. I say this sub-section is "so-called" because that is the term by which it is known. Mr Arnold rightly said that its language did not actually say "must-fit" (just as the next sub-section, so-called "must-match" does not actually say that). I agree that one must go by the actual language and not by the epithet or even the notion behind the epithet. The Judge rightly so said at .
28. In his general consideration of the law, the Judge used the decisions of Laddie J in Ultraframe v Fielding  RPC 435 at  and OSI v. Aspect Vision Care  RPC 289 at p.424 to extract three propositions :
"(i) It does not matter if there are two ways of achieving the necessary fit or connection between the subject article (the first one referred to in the sub-section) and the article to which it fits or with which it interfaces. If the design chosen by the design right owner is a way of achieving that fit or interface, then it does not attract design right no matter how many alternative ways of achieving the same "fit" might be available."
(ii) For the purposes of the sub-section, the article with which the subject article is interfacing can be part of the human body. This might have had relevance in the present case because some of the parts (triggers and a catch) are designed to interface with the human finger or thumb. However, Mr Arnold disclaimed reliance on this he did not rely on the finger or thumb as a must fit item in the context of any article in the present case.
(iii) The sub-section operates to exclude design right even if the relevant part of the design performs some function other than the function described in the sub-section for example, it is decorative, or has an additional function not falling within the provision. This additional function does not exclude the operation of the provision."'
Application of the law to the design features pleaded
a. The Defendants did not copy.
b. Some but not all of the features relied on by the Claimant are excluded from protection by the must fit or method or principle of construction exclusions in the Act.
c. The action therefore fails.